Detailed Action1
Election/Restriction
Claims 2-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.
Applicant's election without traverse of Group I, claim 1, in the reply filed on January 20, 2026 is acknowledged.
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 1 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 applicant regards as the invention.
Claim 1 recites which is used to remove swarf that has been generated during processing of a workpiece by use of the cutting blade and that is present in a processed region processed by the cutting blade of the workpiece, from the processed region. This limitation is confusingly written. The examiner is interpreting this limitation as: which is used to remove swarf from a processed region of a workpiece that has been generated during processing of the workpiece by use of the cutting blade.
Rejections under 35 USC 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thomas Caserta, The Benefits of Rubber Washers, YouTube, Published May 9, 2019, available at https://www.youtube.com/watch?v=3RNpdzv3bXc (“Caserta”).
Claim 1 recites a cleaning tool, wherein the cleaning tool has in its central part an opening to be used at a time of mounting to the spindle, and the cleaning tool is formed in an annular shape from an elastic material softer than the workpiece and does not contain abrasive grains, or the cleaning tool is formed in an annular shape from an elastic material having a Vickers hardness of less than 10.6 GPa and does not contain abrasive grains. Caserta teaches rubber washers, which come in a variety of shapes and sizes including flat, annular pieces that are relatively thin and have central openings of various sizes (see pages 1-3, wherein all references to Caserta refer to the document submitted herewith). Further, since the rubber washers are configured to seal mechanical elements (page 2), one of skill in the art appreciates that they are elastic. As detailed below, since the workpiece is not a positively recited element, the cleaning tool merely has to be softer than a hypothetical workpiece. Since the tool of Caserta is made of rubber, there are many materials capable of being cut that are harder than rubber (including higher hardness rubbers or elastic materials, hard plastics, metals, etc.).
Claim 1 also recites the tool which is used in a state of being mounted to a spindle configured such that an annular cutting blade containing abrasive grains is mountable thereto, and which is used to remove swarf that has been generated during processing of a workpiece by use of the cutting blade and that is present in a processed region processed by the cutting blade of the workpiece, from the processed region. This is an intended used limitation (wherein neither the spindle, cutting blade, nor workpiece are positively recited elements), thus the structure of Caserta merely has to be capable of this intended use. Since at least some of the rubber washers illustrated in Caserta are capable of being removably attached to a spindle (that can also have a cutting blade removably attached thereto) in order to remove swarf generated during cutting of a workpiece, at least some of the washers illustrated in Caserta are capable of this intended use.
Claim 1 rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-2015126022-A (“Misaizu”).
Regarding claim 1, Misaizu teaches a cleaning tool (18) which is used in a state of being mounted to a spindle (16), and which is used to remove swarf that has been generated during processing of a workpiece by use of the cutting blade and that is present in a processed region processed by the cutting blade of the workpiece, from the processed region (fig. 3, ¶ [0030]-[0035], wherein all references to the Misaizu specification refer to the machine translation submitted herewith), wherein the cleaning tool has in its central part an opening to be used at a time of mounting to the spindle (fig. 3, ¶ [0031], wherein since the tool 18 is annular it has an opening in a central portion thereof), and the cleaning tool is formed in an annular shape from an elastic material softer than the workpiece and does not contain abrasive grains (¶ [0031]). Since the workpiece is not a postively recited element, the tool 18 merely has to be capable of being softer than a hypothetical workpiece. Since the tool is made out of relatively soft materials like silicone rubber, urethane, or sponge, the device of Misaizu is capable of being used with a workpiece harder than the material of the tool 18.
Claim 1 also recites the spindle configured such that an annular cutting blade containing abrasive grains is mountable thereto. Given the illustration of the spindle 16 of figs. 2-3, and the description of the spindles (i.e. the cutting blade and tool 18 mounted to the end of the spindle in ¶ [0022]-[0023] & [0031]-[0032]), one of skill in the art will appreciate that the tool 18 is capable of being demounted from spindle 16 so that an annular cutting tool to cut the workpiece is mountable thereon.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Misaizu in view of USPGPub No. 2022/0040878 (“Terada”).
Regarding claim 1, Misaizu teaches all the limitations as detailed in the 102 rejection above. Assuming arguendo that Misaizu fails to explicitly teach the spindle configured such that an annular cutting blade containing abrasive grains is mountable thereto, this would be obvious in view of Terada.
Terada is also directed to a device for cutting semiconductor wafers comprising a spindle configured to have an annular cutting blade or other element mounted thereto (fig. 3, ¶ [0001]-[0002], [0048] & [0066]). Terada teaches the annular cutting blade 52 being removably mounted to the spindle via mounts and a screw (fig. 3, ¶ [0066]-[0074]).
In this case, each of Misaizu and Terada are directed to a device for cutting semiconductor wafers comprising a spindle configured to have an annular cutting blade or other annular element mounted thereto. While Terada fails to explicitly state that the annular cutting blade or deburring blade can be demounted from the spindle, Terada teaches that it is known and predictable to attach annular inserts in a removable manner via mounts and screws. Being able to remove the annular inserts will allow inserts to be replaced after they are worn down and reached the end of their useful life. Thus, in order to replace worn down annular inserts, it would be obvious to modify the spindles of Misaizu so that the cutting blade and annular deburring blade are removable.
Given the above modification, the tool 18 is capable of being demounted from spindle 16 so that an annular cutting tool to cut the workpiece is mountable thereon
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”