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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/8/2026 has been entered.
Response to Arguments
Examiner acknowledges that Applicant is electing to file a Terminal Disclaimer regarding U.S. Patent Application 18/339,324 if the present application is determined to be in condition for allowance.
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that the subject matter incorporated in the amendments filed 9/8/2026 is neither disclosed nor taught by the prior art references as previously applied. Examiner has provided an additional reference for teaching the newly presented contact angle recitations below, as necessitated by amendment.
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 4, 9, 12, 13, and 16 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 claims 4, 9, and 16, the claims recite and limit “a contact angle”, which has prior established antecedent basis.
Regarding claim 12, claim 12 recites and limits “a tilt angle” and “a plane”, both of which have prior established antecedent basis.
Any claim listed as rejected above but not specifically addressed above has inherited the rejection of a claim specifically addressed above due to dependency therefrom.
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.
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) 1-5, 7-12, and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 6,386,952) in view of Kontokostas (US 2020/0316802) and Nissen (US 3566854).
Regarding claim 1, White discloses an apparatus for providing cutting edges, comprising:
a grinding stage comprising a pair of abrading wheels (26), wherein each abrading wheel defines a strip receiving end configured to receive a strip (4) with a first profile along a path P and a strip exiting end that is opposite to the strip receiving end (see Figures 6-10; see wheels 26, blade 4, as well as Col. 4, lines 1-55; Col. 2, lines 21-39),
wherein the grinding stage is oriented at a tilt angle between a plane defined by axes of the abrading wheels and the path P of the strip incident on the strip receiving end (see the angle of tilt in Col. 3, lines 38-51; see also Figures 7-10); and
a plurality of lands on each abrading wheel of said pair of abrading wheels (see at least Col. 3, lines 26-45), wherein each of said lands comprises an abrasive surface that varies from a fine abrasion to a coarse abrasion in a direction from said strip receiving end to said strip exiting end, wherein the lands on the strip receiving end comprise a fine abrasion, such that the lands are configured to remove metal from the first profile to form a second profile (see at least the portion 36 which comprises a fine grit and portion 38 which comprises a coarser grit, as well as Col. 3, line 64-Col. 4, line 55; see also Col. 4, lines 63-65 regarding a continuously changing coarseness; wherein portion 36 at the strip receiving end comprises a fine abrasion).
However, although White contemplates and suggests that the tilt angle can be selected to produce blade edges of a desired configuration (Col. 5, lines 1-29), White is silent regarding a specific numerical value for the tilt angle. Furthermore, White describes but is silent regarding a specific contact angle value, see at least Col. 5, lines 45-55. White does not explicitly teach the tilt angle is between about 0.3 degrees and about 10 degrees, and wherein a contact angle at a strip exiting end is in a range from about 7 degrees to about 9 degrees.
However, from the same or similar field of endeavor, Kontokostas teaches of razor blade grinding using a pair of opposed abrading wheels, including a tilt angle selected in a range from about 0.3 degrees to about 10 degrees (see [0063-0066] and Figure 2).
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 tilt angle within the range as taught by Kontokostas into the invention of White. One would be motivated to do so because White specifically suggests that the desired angle may be selected, wherein Kontokostas answers the silence of White by providing a tilt angle range which produces a desired profile of the metal strip being ground. This modification would be recognized as using a known technique, i.e. selecting a tilt angle within the context of metal strip razor blade grinding, to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success.
From the same or similar field of endeavor, Nissen (US 3566854) teaches subject matter directed towards both the tilt and contact angle, including that the contact angle at an exit is 7 degrees, i.e. wherein a contact angle at a strip exiting end is in a range from about 7 degrees to about 9 degrees (Col. 1, lines 61-75).
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 teachings of Nissen into the invention of White. Nissen teaches that the ranges of angles of contact can be adjusted according to the desired resulting edge, such as by changing the length or diameter of the wheels or by changing the orientation of the axes of the wheels (Col. 1, lines 61-70). Nissen then describes that the configuration of the angles also produces an improved blade edge quality, thereby providing motivation to adjust and select an angle, including an angle within the claimed range. Nissen teaches the contact angle is a result effective variable, i.e. altering the angle produces a blade edge surface having a user’s desired configuration. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the apparatus of White, as White discloses a configuration of contact angles similar to that of Nissen (Col. 4, lines 22-44). Therefore, 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 device of White such that a contact angle at a strip exiting end is in a range from about 7 degrees to about 9 degrees as a matter of routine optimization since it has 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further discloses a first grinding stage configured to remove metal from the strip incident on the first grinding stage along the path P to form the first profile and wherein the grinding stage is a second grinding stage (White: wherein the first portion 34 forms a first grinding stage configured to remove material from the blade 4 to form a first profile, see Col. 4, lines 22-31).
Regarding claim 3, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein said tilt angle is oriented such that the axes are more proximate to the path P at the strip exiting end than the strip receiving end (White: see at least Figures 7 and 8; wherein the tilt angle of the wheels 26 are oriented such that the axes of the wheels are more proximate to the blade 4 path at the exiting end adjacent 48 than at the receiving end).
Regarding claim 4, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein the tilt angle is selected such that a contact angle between a first direction orthogonal to the path P and a second direction between a tip of the strip and a center of rotation of a respective one of the pair of abrading wheels diminishes in said direction from said strip receiving end to said strip exiting end (wherein Examiner acknowledges the Applicant provided definition of “contact angle” on page 8, lines 1-3 of the Specification; White: see at least Col. 4, lines 25-31 and 45-55; see also Col. 3, lines 38-52 and Figures 7-9).
Regarding claim 5, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein said lands are arranged in a spiral helix such that the spiral helix is a right-handed thread on one abrading wheel of the pair of abrading wheels, and a left-handed thread on the other abrading wheel of the pair of abrading wheels (White: Col. 5, lines 9-11 disclose that the grinding assemblies are defined as a pair of opposed helically grooved wheels, i.e. right and left handed threaded helically grooved wheels; see also Figures 6-10).
Regarding claim 7, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein the abrasive surface of each of said lands comprises a plurality of sections between the strip receiving end and the strip exiting end (White: see Figures 6-10);
wherein a first section of the plurality of sections adjacent the strip receiving end comprises a fine abrasive surface configured to contact a tip of the first profile (see section 36; see at least Col. 4, lines 4-55); and
wherein a second section of the plurality of sections adjacent the strip exiting end comprises a coarse abrasive surface configured to contact a portion of the strip that is a distance back from the tip of the first profile (see section 38; see at least Col. 4, lines 4-55; see also Col. 2, lines 44-50).
Regarding claim 9, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein said tilt angle is oriented such that the axes are more proximate to the path P at the strip exiting end than the strip receiving end (see at least Figures 7 and 8; wherein the tilt angle of the wheels 26 are oriented such that the axes of the wheels are more proximate to the blade 4 path at the exiting end adjacent 48 than at the receiving end); and
wherein the tilt angle is selected such that a contact angle between a first direction that is orthogonal to the path P and a second direction between a tip of the strip and a center of rotation of a respective one of the pair of abrading wheels diminishes in said direction from said strip receiving end to said strip exiting end (wherein Examiner acknowledges the Applicant provided definition of “contact angle” on page 8, lines 1-3 of the Specification; see at least Col. 4, lines 25-31 and 45-55; see also Col. 3, lines 38-52 and Figures 7-9).
Regarding claim 10, White discloses an apparatus for providing cutting edges comprising:
a grinding stage including a pair of abrading wheels (26) that extend from a strip receiving end to a strip exiting end (see Figures 6-10; see wheels 26, blade 4, as well as Col. 4, lines 1-55; Col. 2, lines 21-39);
wherein the pair of abrading wheels each comprise an abrasive surface that is configured to remove material from a strip of metal incident on the strip receiving end along a path P; and wherein the abrasive surface varies from a fine abrasion to a coarse abrasion in a direction from the strip receiving end to the strip exiting end, and wherein the lands on the strip receiving end comprise a fine abrasion (see Abstract, Figures 6-10; see at least the portion 36 which comprises a fine grit and portion 38 which comprises a coarser grit, as well as Col. 3, line 64-Col. 4, line 55; see also Col. 4, lines 63-65 regarding a continuously changing coarseness; wherein portion 36 at the strip receiving end comprises a fine abrasion).
However, although White contemplates and suggests that the tilt angle can be selected to produce blade edges of a desired configuration (Col. 5, lines 1-29), White is silent regarding a specific numerical value for the tilt angle. Furthermore, White describes but is silent regarding a specific contact angle value, see at least Col. 5, lines 45-55. White does not explicitly teach the grinding stage is oriented at a tilt angle between about 0.3 degrees and about 10 degrees between a plane defined by axes of the abrading wheels and the path P of the strip incident on the strip receiving end, and wherein a contact angle at a strip exiting end is in a range from about 7 degrees to about 9 degrees.
However, from the same or similar field of endeavor, Kontokostas teaches of razor blade grinding using a pair of opposed abrading wheels, including a tilt angle selected in a range from about 0.3 degrees to about 10 degrees (see [0063-0066] and Figure 2).
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 tilt angle within the range as taught by Kontokostas into the invention of White. One would be motivated to do so because White specifically suggests that the desired angle may be selected, wherein Kontokostas answers the silence of White by providing a tilt angle range which produces a desired profile of the metal strip being ground. This modification would be recognized as using a known technique, i.e. selecting a tilt angle within the context of metal strip razor blade grinding, to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success.
From the same or similar field of endeavor, Nissen (US 3566854) teaches subject matter directed towards both the tilt and contact angle, including that the contact angle at an exit is 7 degrees, i.e. wherein a contact angle at a strip exiting end is in a range from about 7 degrees to about 9 degrees (Col. 1, lines 61-75).
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 teachings of Nissen into the invention of White. Nissen teaches that the ranges of angles of contact can be adjusted according to the desired resulting edge, such as by changing the length or diameter of the wheels or by changing the orientation of the axes of the wheels (Col. 1, lines 61-70). Nissen then describes that the configuration of the angles also produces an improved blade edge quality, thereby providing motivation to adjust and select an angle, including an angle within the claimed range. Nissen teaches the contact angle is a result effective variable, i.e. altering the angle produces a blade edge surface having a user’s desired configuration. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the apparatus of White, as White discloses a configuration of contact angles similar to that of Nissen (Col. 4, lines 22-44). Therefore, 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 device of White such that a contact angle at a strip exiting end is in a range from about 7 degrees to about 9 degrees as a matter of routine optimization since it has 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches a first grinding stage configured to remove metal from the strip incident on the first grinding stage along the path P to form a first profile; and wherein the grinding stage is a second grinding stage, wherein the strip receiving end faces the first grinding stage and wherein the abrasive surface is configured to remove material from the first profile to form a second profile (White: wherein the first portion 34 forms a first grinding stage configured to remove material from the blade 4 to form a first profile, see Col. 4, lines 22-31).
Regarding claim 12, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches a tilt angle formed between a plane defined by axes of the abrading wheels and the path P of the strip (White: see the angle of tilt in Col. 3, lines 38-51; see also Figures 7-10); and
wherein said tilt angle is oriented such that the axes are more proximate to the path P at the strip exiting end than the strip receiving end (see at least Figures 7 and 8; wherein the tilt angle of the wheels 26 are oriented such that the axes of the wheels are more proximate to the blade 4 path at the exiting end adjacent 48 than at the receiving end).
Regarding claim 14, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches a plurality of lands on each abrading wheel of said pair of abrading wheels, wherein each of said lands comprises the abrasive surface such that the lands are configured to remove metal from the first profile to form the second profile (White: see at least Col. 3, lines 36-34 and 38-45).
Regarding claim 15, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein said lands on each abrading wheel of said pair of abrading wheels are arranged in a spiral helix with the spiral helix having a right-handed thread on one abrading wheel of the pair of abrading wheels, and a left-handed thread on the other abrading wheel of the pair of abrading wheels (White: Col. 5, lines 9-11 disclose that the grinding assemblies are defined as a pair of opposed helically grooved wheels, i.e. right and left handed threaded helically grooved wheels; see also Figures 6-10).
Regarding claim 16, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein the tilt angle is selected such that a contact angle between a first direction orthogonal to the path P and a second direction between a tip of the strip and a center of rotation of the pair of abrading wheels diminishes in said direction from said strip receiving end to said strip exiting end (White: wherein Examiner acknowledges the Applicant provided definition of “contact angle” on page 8, lines 1-3 of the Specification; see at least Col. 4, lines 25-31 and 45-55; see also Col. 3, lines 38-52 and Figures 7-9).
Regarding claim 17, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein the abrasive surface of each of said lands comprises a plurality of sections between the strip receiving end and the strip exiting end (White: see Figures 6-10);
wherein a first section of the plurality of sections adjacent the strip receiving end comprises a fine abrasive surface configured to contact a tip of the first profile (White: see section 36; see at least Col. 4, lines 4-55); and
wherein a second section of the plurality of sections adjacent the strip exiting end comprises a coarse abrasive surface configured to contact a portion of the strip that is a distance back from the tip of the first profile (see section 38; see at least Col. 4, lines 4-55).
Regarding claims 8 and 18, White in view of Kontokostas and Nissen teaches the claimed invention as applied above, wherein modified White further teaches wherein the coarse abrasive surface is more coarse than the fine abrasive surface (White: Col. 4, lines 4-21).
However, White does not explicitly teach of an additional section between zones 36 and 38, i.e. wherein the apparatus further includes a third section of the plurality of sections between the first section and the second section and wherein the third section comprises an abrasive surface of the third section that is more coarse than the fine abrasive surface of the first section and less coarse than the coarse abrasive surface of the second section.
However, White does explain that the invention has been described as having the number of zones for ease of explanation, and specifically suggests that a different number of distinct zones could be employed in alternative embodiments, see Col. 4, lines 60-65. Given that there are three portions shown, there are a finite number of locations to incorporate an additional zone (or subtract a zone) as suggested by White. In the discussion portion of the prior art, White also describes the order of stations as the actions they perform, i.e. grinding, rough honing, medium honing, final honing, and stropping (see Col. 1, lines 35-59 and Col. 2, lines 1-13). White overcomes drawbacks of multi station grinding by providing a singular station comprising wheels of varying degrees of coarseness as the blade strip travels therethrough.
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 an additional zone, i.e. a third section comprising an abrasive surface of the third section, as suggested by White, in between portions 36 and 38, and wherein the abrasive surface of the third section is more coarse than the fine abrasive surface of the first section (36) and less coarse than the coarse abrasive of the third section (38). One would be motivated to do so not only because White specifically suggests modifications to the number of zones, but also because providing an intermediate zone having a grit value between the adjacent zones mimics the gradual progression of resurfacing of the prior art, while still providing all of the advantages of the single station of White. This modification would be recognized as using a known technique, i.e. incorporation of an additional surfacing zone, to improve upon a base embodiment as suggested by White in a similar manner, and would yield predictable results with a reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-12, and 14-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-26 of copending Application No. 18/339,324 in view Kontokostas (US 2020/0316802) and Nissen (US 3566854).This is a provisional nonstatutory double patenting rejection.
Regarding the instant claims, the claimed subject matter is disclosed by the co-pending claims with the exception of reciting the specific values for the tilt angle and the contact angle. In an effort to reduce redundancy and acknowledging Applicant’s decision to postpone filing a Terminal Disclaimed until a time at which (if) the instant application is determined to be allowable, Examiner kindly refers Applicant to the combination and motivation statements provided above. The claimed features which are lacking in the co-pending claims are obvious over Kontokostas and Nissen; please see the rejection and motivation provided above for specific citations to each prior art.
Conclusion
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
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