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 .
Status
In response to the amendment filed on 02/19/2026, claims 1, 5, 11, and 15 have been amended, and claims 6 and 16 are cancelled. Claims 1-5, 7-15, and 17-20 are pending and under examination.
Drawings
The drawings submitted on 02/19/2026 are being considered by the examiner. In response to the drawing objection made in the previous non-final office action dated on 11/18/2025, replacement drawings of figs. 4 and 5 are submitted and specification, ¶ 0042, is amended.
Additionally, the arguments regarding fig. 4, the ellipsoidal machining element and fig. 5, the polynomial machining elements are persuasive.
Therefore, the drawing objection has been withdrawn.
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 1-5, 7-15, and 17-20 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.
In claims 1 and 11, the term “the gap” in line 5 lacks antecedent basis and it may be amended as “a gap”. On the other hand, the “gap” in line 5 is not defined whereas the “a gap” in line 10 is defined as “a gap between the machining element and the surface of the workpiece”. For examination purpose the examiner has assumed they are the same gap, and “a gap” in line 10 may be amended as “[[a]]the gap”.
Claims 2-5 and 7-10 inherit the above deficiency by nature of their dependency from claim 1, and claims 12-15 and 17-20 inherit the above deficiency by nature of their dependency from claim 11.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 10, 11, 13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Higashi et al. (New machining method for making precise and very smooth mirror surfaces made from Cu and AL alloys for synchrotron radiation optics, Review of Scientific Instruments, 60, 2120-2123, July 1989, cited on 09/29/2023 IDS, hereinafter Higashi), in view of Li et al. (US 2021/0031328, hereinafter Li).
Regarding claim 1, Higashi discloses an elastic emission machining (EEM) apparatus (fig. 1(a), EEM apparatus) comprising:
a machining element having rotational symmetry about the axis of rotation and an outer periphery region proximal to the gap, that is configured to spin about an axis of rotation (figs. 1(a) and 1(b), a polyurethane wheel [corresponds to the recited machining element] rotates about an axis of rotation and is symmetric about the axis of rotation. A center of the sphere or a center of cross lines shown in fig. 1(b) is the axis of rotation. An outer periphery of the polyurethane wheel is proximal to a gap between the wheel and a surface of a workpiece as shown in fig. 1(b));
a tank with a chamber positioned to receive the machining element and a slurry comprising a mixture of a liquid and chemically reactive fine particles (fig. 1(a), as new fig. 4 of the instant application shows an inner space of the tank is the recited chamber. Thus, a chamber of a tank receives the polyurethane wheel [corresponds to the recited machining element] and slurry; p. 2121, right column, lines 5-8, mixed fluid [corresponds to the recited slurry] comprises polishing power particles, water, and etching solution. The diameter of powder particles is less than 10 nm; p. 2120, right column, lines 20-21, the EEM process polishes the work surface mechanically and chemically. Thus, the powder particles are chemically reactive); and
a driving system coupled to and configured to engage the machining element to spin about the axis of rotation adjacent to a surface of the workpiece to accelerate the chemically reactive fine particles through a gap between the machining element and the surface of the workpiece (fig. 1(a), a variable-speed motor rotates the polyurethane wheel [corresponds to the recited machining element] about the axis of rotation; fig. 1(b), the polyurethane wheel rotates adjacent to a surface of a workpiece and the mixed fluid flows through a gap between the polyurethane wheel and the surface of the workpiece), but does not disclose the machining element having a non-spherical shape.
Li teaches, in an analogous EEM apparatus field of endeavor, the machining element having a non-spherical shape (fig. 4 and ¶ 0033-34 and 0040, a constraint mechanism 2 [corresponds to the recited machining element] rotates and allows polishing slurry to flow between the constraint mechanism 2 and a surface of a workpiece 3. In one embodiment, the cylindrical constraint mechanism 2 is equipped with a polishing constraint base surface 35 to have a non-spherical shape as shown in fig. 4. The constraint base surface 35 deforms to match the surface shapes of the workpieces).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus of Higashi to provide the non-spherical machining element as taught by Li. The machining element can be provided according to different workpiece surface shapes so that the polishing slurry flows well along the surface of the workpiece (Li ¶ 0034).
Regarding claim 11, Higashi discloses a method of making an elastic emission machining apparatus, the method comprising:
providing a machining element having rotational symmetry about the axis of rotation and an outer periphery region proximal to the gap, and that is configured to spin about an axis of rotation (figs. 1(a) and 1(b), a polyurethane sphere [corresponds to the recited machining element] is provided. The sphere rotates about an axis of rotation and is symmetric about the axis of rotation. A center of the sphere or a center of cross lines shown in fig. 1(b) is the axis of rotation. An outer periphery of the polyurethane wheel is proximal to a gap between the wheel and a surface of a workpiece as shown in fig. 1(b));
positioning a chamber of a tank to receive the machining element and a slurry comprising a mixture of a liquid and chemically reactive fine particles (fig. 1(a), as new fig. 4 of the instant application shows an inner space of the tank is the recited chamber. Thus, a chamber of a tank is positioned to receive the polyurethane wheel [corresponds to the recited machining element] and slurry; p. 2121, right column, lines 5-8, mixed fluid [corresponds to the recited slurry] comprises polishing power particles, water, and etching solution. The diameter of powder particles is less than 10 nm; p. 2120, right column, lines 20-21, the EEM process polishes the work surface mechanically and chemically. Thus, the powder particles are chemically reactive. As discussed in 112(b) rejection, the tank does not require an enclosed chamber); and
coupling a driving system to and that is configured to engage the machining element to spin about the axis of rotation adjacent to a surface of the workpiece to accelerate the chemically reactive fine particles through a gap between the machining element and the surface of the workpiece (fig. 1(a), a variable-speed motor is coupled to the polyurethane wheel [corresponds to the recited machining element] to rotate the wheel about the axis of rotation; fig. 1(b), the polyurethane wheel rotates adjacent to a surface of a workpiece and the mixed fluid flows through a gap between the polyurethane wheel and the surface of the workpiece), but does not disclose the machining element having a non-spherical shape.
Li teaches, in an analogous EEM field of endeavor, the machining element having a non-spherical shape (fig. 4 and ¶ 0033-34 and 0040, a constraint mechanism 2 [corresponds to the recited machining element] rotates and allows polishing slurry to flow between the constraint mechanism 2 and a surface of a workpiece 3. In one embodiment, the cylindrical constraint mechanism 2 is equipped with a polishing constraint base surface 35 to have a non-spherical shape as shown in fig. 4. The constraint base surface 35 deforms to match the surface shapes of the workpieces).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM method of Higashi to provide the non-spherical machining element as taught by Li. The machining element can be provided according to different workpiece surface shapes so that the polishing slurry flows well along the surface of the workpiece (Li ¶ 0034).
Regarding claims 3 and 13, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 3) and the method as in the rejection of claim 11 (as to claim 13), wherein the shape of the machining element is acylindrical (Li, fig. 4 and ¶ 0031, the constraint mechanism 2 [corresponds to the recited machining element] equipped with the polishing constraint base surface 35 does not have a cylindrical shape. It matches the convex curved surface of a workpiece).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus or system of Higashi as modified by Li to provide the acylindrical machining element as taught by Li. The machining element can be provided according to different workpiece surface shapes so that the polishing slurry flows well along the surface of the workpiece (Li ¶ 0034).
Regarding claims 10 and 20, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 10) and the method as in the rejection of claim 11 (as to claim 20), wherein the thickness of the gap is greater than the width of the chemically reactive fine particles (Higashi, p. 2121, right column, lines 6-7, the diameter of powder particles is less than 10 nm; fig. 1(b), the particles flow through the gap between the polyurethane wheel and the surface of the workpiece. Thus, the thickness of the gap is greater than the diameter of the particles; p. 2120, right column, lines 20-21, the EEM process polishes the work surface mechanically and chemically. Thus, the powder particles are chemically reactive).
Claims 2, 9, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Higashi in view of Li, as applied to claims 1 and 11 above respectively, and in further view of Dodd (US 2007/0141962).
Regarding claims 2 and 12, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 2) and the method as in the rejection of claim 11 (as to claim 12), but does not disclose the machining element is configured to spin about the axis of rotation that extends in a direction substantially parallel to at least a portion of a surface of the workpiece.
Dodd teaches, in an analogous polishing apparatus field of endeavor, the machining element is configured to spin about the axis of rotation that extends in a direction substantially parallel to at least a portion of a surface of the workpiece (figs. 1 and 3, a rotation axis of a grinding wheel 40 [corresponds to the recited machining element] is substantially perpendicular to a surface of a workpiece, W1. Dodd teaches a polishing apparatus. Although the application of Dodd is not for the EEM process, the grinding wheel of Dodd can be combined with the EEM apparatus of Higashi as modified by Li to teach the machining element which spins as recited).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus or system of Higashi as modified by Li to provide the rotational axis of the machining element parallel to the surface of the workpiece as taught by Dodd so that polishing can be done precisely along the surface of the workpiece.
Regarding claims 9 and 19, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 9) and the method as in the rejection of claim 11 (as to claim 19), further comprising motion control devices coupled to effect motion of the machining element (Li ¶ 0052, an intelligent system 36 [corresponds to the recited motion control device] can control rotation and up-down motion of a constraint base surface 35 of the constraint mechanism 2 [corresponds to the recited machining element]), but does not disclose the machining element is coupled to an axle and the motion control devices coupled to effect at least one axis of linear motion and at least one axis of angular motion of the machining element.
Dodd teaches, in the analogous polishing apparatus field of endeavor, the machining element is coupled to an axle and the motion control devices coupled to effect at least one axis of linear motion and at least one axis of angular motion of the machining element (fig. 1 and ¶ 0018, a grinding wheel 40 [corresponds to the recited machining element] is coupled to a spindle 16 [corresponds to the recited axle]; ¶ 0024-25, the grinding wheel 40 can move linearly as shown by the arrow A in fig. 1; ¶ 0031, a computer number control can adjust a left-right position and an up-down position of a worktable so that it can have an effect of moving the grinding wheel angularly).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus or system of Higashi as modified by Li to provide the motion control devices to effect the linear motion and the angular motion of the machining element as taught by Dodd so that the machining element effectively polishes the workpiece having an irregular surface shape.
Claims 4, 5, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Higashi in view of Li, as applied to claims 1 and 11 above respectively, and in further view of Tresse (US 2018/0193970).
Regarding claims 4 and 14, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 4) and the method as in the rejection of claim 11 (as to claim 14), but does not disclose the shape of the machining element is an ellipsoid.
Tresse teaches, in an analogous grinding apparatus field of endeavor, the shape of the machining element is an ellipsoid (fig. 3, abrasive means 4 [corresponds to the recited machining element] of a grinding apparatus can be shaped as ellipsoid as shown in the third figure of fig. 3. As discussed similarly for the Dodd reference above, the application of Tresse is not for the EEM process, but the grinding wheel of Tresse can be combined with the EEM apparatus of Higashi as modified by Li to teach the recited shape of the spinning machining element).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus or system of Higashi as modified by Li to provide the ellipsoidal machining element as taught by Tresse in order to polish a workpiece having a corresponding surface shape effectively.
Regarding claims 5 and 15, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 5) and the method as in the rejection of claim 11 (as to claim 15), but does not disclose the shape of an outer perimeter of the machining element is polynomial.
Tresse teaches, in the analogous grinding apparatus field of endeavor, the shape of the outer perimeter of the machining element is polynomial (the third figure of fig. 3 also presents a polynomial shape of the abrasive means 4 [corresponds to the recited machining element] of the grinding apparatus).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus or system of Higashi as modified by Li to provide the polynomial machining element as taught by Tresse in order to polish a workpiece having a corresponding surface shape effectively.
Claims 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Higashi in view of Li, as applied to claims 1 and 11 above respectively, and in further view of Kondoh (US 2015/0266156).
Regarding claims 7 and 17, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 7) and the method as in the rejection of claim 11 (as to claim 17), but does not disclose the shape of the machining element is toroidal.
Kondoh teaches, in an analogous polishing apparatus field of endeavor, the shape of the machining element is toroidal (¶ 0038 and 0047, Kondoh discloses a polishing apparatus that is capable of polishing a non-flat surface of a workpiece with a rotary tool 20 [corresponds to the recited machining element]; ¶ 0086, the rotary tool 20 can be various another shape. Kondoh does not teach the EEM process, but teaches a rotating machining element used for grinding/polishing of a workpiece especially the workpiece having non-flat surfaces. Thus, the rotary tool of Kondoh can be combined with the constraint mechanism of Li for the EEM process to provide the rotating machining element. Kondoh teaches the rotary tool can be a various shape, thus it can have a toroidal shape).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus or system of Higashi as modified by Li to provide the machining element which may have the toroidal shape as taught by Kondoh in order to fit the surface shape of the workpiece for effective polishing effect.
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Higashi in view of Li, as applied to claims 1 and 11 above respectively, and in further view of Orihara et al. (JP 2017181731A, hereinafter Orihara).
Regarding claims 8 and 18, Higashi as modified by Li teaches the apparatus as in the rejection of claim 1 (as to claim 8) and the method as in the rejection of claim 11 (as to claim 18), but does not disclose the shape of the machining element is cylindrical.
Orihara teaches, in an analogous polishing apparatus field of endeavor, the shape of the machining element is cylindrical (Orihara English translation, p. 9:18-26 and fig. 2(a), Orihara teaches an EEM polishing method and a shape of an electromagnet 3 [corresponds to the recited machining element] can be cylindrical. Specification of the instant application states fig. 19C illustrates the cylindrical machining element (¶ 0086). It appears the shape of the machining element is defined from a view perpendicular to the axis of rotation).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the EEM apparatus or system of Higashi as modified by Li to provide the cylindrical machining element as taught by Orihara in order to polish a workpiece having a flat surface effectively.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues Higashi, Li, Dodd, Tresse, Kondoh, and Orihara do not teach or suggest the amended claim limitations that a machining element having a non-spherical shape, the machining element having rotational symmetry about the axis of rotation and an outer periphery region proximal to the gap, that is configured to spin about an axis of rotation. Examiner respectfully disagrees.
Applicant asserts Higashi discloses an EEM apparatus using a rotatory sphere, not a non-spherical machining element. As Applicant points out, Higashi discloses a rotating sphere as the recited machining element. Because it rotates, there must be an axis of rotation which passes through a center of the sphere. Then, the sphere has the rotational symmetry about the axis of rotation. Additionally, the outer periphery region of the sphere is proximal to the gap between the machining element and the surface of the workpiece as shown in Higashi fig. 1(b).
What Higashi lacks is a non-spherical machining element, and Li is combined to teach the non-spherical machining element. However, Applicant argues Li does not teach the non-spherical machining element because the Li’s recited machining element adaptively deforms to match the surface shape of the workpieces to be machined. The Li’s recited machining element comprises the constraint mechanism 2 equipped with the polishing constraint base surface 35. However, there is no restriction in claim limitations that the machining element having the non-spherical shape during polishing is not valid. Nevertheless, examination of Li’s fig. 4 shows the constraint mechanism 2 has a cylindrical shape, and that is not the spherical shape. Even with the polishing constraint base surface 35, the recited machining element of Li would have the cylindrical shape prior to polishing a workpiece.
Therefore, the arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 SUKWOO JAMES CHANG whose telephone number is (571)272-7402. The examiner can normally be reached M-F 8:00a-5:00p.
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/S.J.C./Examiner, Art Unit 3723
/DAVID S POSIGIAN/Supervisory Patent Examiner, Art Unit 3723
