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 1-4 and 6 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.
The claim limitation “the surface layer is non-removably fixed on the base” is not supported in the originally filed specification. Specifically, the originally specification is silent with regards to the surface layer being “non-removably fixed” and although paragraph 104 states that the layer may be formed by thermal spraying, it also states that “the separation of the surface layer from the base can further suppressed” which would imply that separation is possible thus is not “non-removably fixed”. Therefore the specification fails to support the newly added limitation of the surface layer being non-removably fixed on the base.
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.
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.
2. Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kusakari (US 2008/0283168).
In reference to claim 16, Kusakari a rebar tying tool, the rebar tying tool comprising
a feed motor (electric motor not shown) [see paragraph 0035], and
feed rollers (10) configured to rotate with rotation of the feed motor, configured to feed a wire (5) towards rebars, and configured to contact the wire when the rebar tying tool ties the rebars with the wire [see paragraph 0035].
Kusakari discloses the invention substantially as claimed except for wherein the feed roller has a wear resistant surface layer.
However, Kusakari further discloses a wear resistant treatment is applied to elements of the tool that are in constant contact with the wire and thus subject to wear wherein the treatment is a wearing preventative plate/layer (27) added to the element to prevent wear thereof [see paragraph 0057].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the teaching of Kusakari to apply a wear resistant treatment in the form of a wear preventative layer on the feed rollers of the rebar tool since these elements are subjected to a high wear probability with constant wire contact.
With regards to the limitation that the entire outer surface of the feed roller being covered by the wear resistant layer, based on the teaching of preventing wear to surfaces of the elements in contact with the wire it would have been obvious to one having ordinary skill in the art to have the layer on the entire outer surface of the feed roller since the entire outer surface is in contact with the wire during rotational feeding of the wire.
Kusakari disclose the layer (27) is made of a material with a high hardness such as a carbide or ceramic [see paragraph 0057].
Kusakari discloses the invention substantially as claimed except for wherein the material is a tool steel and the hardness is equal to or more than 900 HV.
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the surface layer with a material of tool steel since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of mechanical efficiency [see In re Leshin, 125 USPQ 416], and it would have been obvious to provide the surface layer with a hardness equal to or more than 900HV, since it have been held that 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 [see In re Aller, 105 USPQ 233].
It is noted that the limitation “is produced by MIM using powder of a high-speed tool steel” is being treated as a product- by-process limitation. However such process limitations do not result in any patentably defining structure. Therefore, Examiner is treating these limitation as product-by-process limitations and such are not germae to the end result product.
In reference to claim 17, Kusakari a rebar tying tool, the rebar tying tool comprising
a feed motor (electric motor not shown) [see paragraph 0035], and
a first feed rollers (10) configured to rotate with rotation of the feed motor, configured to feed a wire (5) towards rebars, and configured to contact the wire when the rebar tying tool ties the rebars with the wire [see paragraph 0035], and
a second feed roller (10) configured to rotate with rotation of the first feed roller and configured to contact the wire (5) when the wire is fed toward the rebars,
wherein the wire is clamped between the first feed roller and the second feed roller and fed toward the rebars by rotation of the first feed roller and the second feed roller (10),
the first feed roller comprises a groove that the wire passes through when the wire is fed toward the rebars [see paragraph 0035].
Kusakari discloses the invention substantially as claimed except for wherein the first feed roller has a wear resistant surface layer.
However, Kusakari further discloses a wear resistant treatment is applied to elements of the tool that are in constant contact with the wire and thus subject to wear wherein the treatment is a wearing preventative plate/layer (27) added to the element to prevent wear thereof [see paragraph 0057].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the teaching of Kusakari to apply a wear resistant treatment in the form of a wear preventative layer on the feed rollers of the rebar tool since these elements are subjected to a high wear probability with constant wire contact.
With regards to the limitation that the entire outer surface of the feed roller being covered by the wear resistant layer, based on the teaching of preventing wear to surfaces of the elements in contact with the wire it would have been obvious to one having ordinary skill in the art to have the layer on the entire outer surface of the feed roller since the entire outer surface is in contact with the wire during rotational feeding of the wire.
Kusakari disclose the layer (27) is made of a material with a high hardness such as a carbide or ceramic [see paragraph 0057].
Kusakari discloses the invention substantially as claimed except for wherein the material is a tool steel and the hardness is equal to or more than 1000 HV.
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the surface layer with a material of tool steel since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of mechanical efficiency [see In re Leshin, 125 USPQ 416], and it would have been obvious to provide the surface layer with a hardness equal to or more than 900HV, since it have been held that 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 [see In re Aller, 105 USPQ 233].
It is noted that the limitation “is produced by MIM using powder of a high-speed tool steel” is being treated as a product- by-process limitation. However such process limitations do not result in any patentably defining structure. Therefore, Examiner is treating these limitation as product-by-process limitations and such are not germae to the end result product.
Response to Arguments
Applicant’s arguments, see pages 5-7, filed October 29, 2025, with respect to claims 1-4 and 6 have been fully considered and are persuasive. Specifically, the newly added limitation directed to the layer being “non-removably fixed” appears to be new matter as explained above. Thus the rejection of claim 1 has been withdrawn, however it is noted that should the limitation be removed from the claim the previous rejection may be reapplied to the claims.
Applicant's arguments with respect to Kusakari as applied to claims 16 and 17 have been fully considered but they are not persuasive. Applicant argues that “the material and manufacturing method of the feed gear 10” is not disclosed and that the “wearing preventative plate 27 does not cover the entire outer surface of the frame plate 13e”.
The Examiner respectfully disagrees. It is noted that the method and manufacturing method of the feed rollers are recited as a process-by-product limitation and given the claim is directed to the product the process of manufacturing does not hold any patentable weight to the end product of a feed roller with a surface layer. With regards to the entire surface of the feed roller being covered by the wearing preventative plate, Kusakari discloses the need for the plate to be placed where repeated contact with the wire results in wear. Thus taking this teaching and the fact that the entire outer surface of the feed roller contacts the wire during rotation of the feed roller to feed the wire it would be obvious to one having ordinary skill in the art to have the wearing preventative plate on the entire outer surface of the feed rollers.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725