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 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 9 and 12 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “in the range of 45° to 135°”, and the claim also recites “preferably in the range of 80° to 100°” and “preferable 90°” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Further, the inclusion of the term “preferably” makes it unclear whether the limitations following the term are optional or required by the claim limitations and the claim is indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation “an outer diameter (d) of less than 3.4 centimetres”, and the claim also recites “preferably less than 3.0 centimetres” and “preferably of less than 2.6 centimetres” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Further, the inclusion of the term “preferably” makes it unclear whether the limitations following the term are optional or required by the claim limitations and the claim is indefinite.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-2, 4-7, and 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moreland (US 201500336238).
Regarding claim 1, Moreland discloses A hand-held electric polishing or sanding power tool (Figure 1) comprising an elongated tool housing (Figure 1, items 24, 22, and 23 combine to form the housing), in which an electric motor is accommodated (Figure 3, item 16), and a moveable backing plate protruding externally from the tool housing (Figure 3, item 27 where paragraph 0037 describes a flange with the shaft),
wherein the electric motor is adapted to actuate the backing plate (Par. 0037), the backing plate thereby performing a rotational, random-orbital, orbital or gear-driven working movement in its plane of extension (paragraph 0037 describes a flange with the shaft),
wherein a bottom surface of the backing plate is adapted to detachably hold a polishing or sanding member (Par. 0037 describes a grinder wheel attached to the base of the wheel spindle), and
wherein the tool housing has a rear part adapted and formed to be gripped by a hand of a user of the power tool thereby holding the power tool during its intended use (Figure 2, item 23. Paragraphs 0037 and 0038 describe that the handle) and a tubular front part from which the backing plate protrudes (Figure 3 shows a tubular part formed by 22 and 24 from which the spindle protrudes. The limitations do not require the entire part to be tubular and item 22 is shown to have a tubular shape), the front part having a smaller diameter than the rear part and being attached to the rear part (Figure 2 shows the diameter of 22 being less than the largest diameters of 23. The limitations do not require the diameter of the tubular part to be larger along its entire length so as the diameter at 22 is less than the larger diameter of 23 the limitations are disclosed),
wherein at least part of the electric motor is accommodated in the tubular front part of the tool housing (Figure 2 shows the entire motor 16 being housed within the tubular front part 16).
Regarding claim 2, Moreland discloses that the entire electric motor is accommodated in the tubular front part of the tool housing (Figure 2 shows the entire motor 16 being housed within the tubular front part 22).
Regarding claim 4, Moreland discloses that a portion of the tubular front part of the tool housing has the form of a hollow cylinder (Figure 2 shows the front part 22 is a hollow cylinder to house the motor).
Regarding claim 5, Moreland discloses that a reduction gear arrangement is located functionally between a motor shaft of the electric motor and a tool shaft of the power tool to which the backing plate is attached and which drives the backing plate in order to realize its working movement. Figure 3 shows a gearset 11 between the motor and the spindle.
Regarding claim 6, Moreland discloses that the rear part of the tool housing is provided with an actuator for turning the electric motor on or off and/or with an adjustment mechanism for adjusting a speed of the electric motor, wherein the actuator and/or the adjustment mechanism are arranged and designed to be operated from outside the tool housing by a user’s hand or finger. Figure 6 item 200 shows an actuator to be operated from outside the tool housing. Paragraph 0052 describes that the actuator turns the electric motor on and off and is operated by the user’s hand.
Regarding claim 7, Moreland discloses that the actuator includes an actuating switch or an actuating lever (Figure 1 item 200 shows an actuating lever which also serves as a switch. The limitations of the term “switch” allow for item 200 to meet the limitations of a switch as it allows for switching between on and off).
Regarding claim 9, Moreland discloses that a first rotational axis of a motor shaft of the electric motor and a second rotational axis of a tool shaft of the power tool to which the backing plate is attached and which drives the backing plate in order to realize its working movement, extend in an angle (α) in respect to each other, the angle (α) being in the range of 45° to 135°, preferably in the range of 80° to 100°, particularly preferable 90°. Figure 3 shows a 90 degree angle between the shaft of the motor of 16 and the spindle 27.
Regarding claim 10, Moreland discloses that an angular gear arrangement is located functionally between a motor shaft of the electric motor and a tool shaft of the power tool to which the backing plate is attached and which drives the backing plate in order to realize its working movement. Figure 3 shows a gear arrangement 11 between the motor shaft and the tool shaft 27 to move the backing plate.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreland (US 201500336238) in view of Valentini (US 20160121475).
Regarding claim 3, Moreland discloses the limitations of claim 1 as set forth in the above 102 rejection. However, Moreland does not explicitly disclose that the rear part of the tool housing is made of a plastic material and/or the tubular front part of the tool housing is made of metal or a composite material comprising metal.
Moreland and Valentini are analogous prior art because both describe hand held grinder tools. Valentini teaches that the rear handheld portion of the tool can be made of a plastic (Par. 0057) to ensure comfortable gripping and that the front part can be made of a metal (Par. 0061). Moreland does not describe the materials to be used to make the housings so one of ordinary skill in the art would have to choose suitable materials for the rear part of the tool and the tubular front part. As both Moreland and Valentini show rear parts to be gripped, front parts adjacent the heads, and Moreland shows the materials being suitable for use for a handheld grinding tool, the metal material for the front tubular portion and the plastic material for the handle portion as described in Valentini would provide predictable results as the materials in Moreland. Thereby, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the metal material as the front tubular portion and the plastic material for the handle portion of Moreland as described in Valentini because the plastic ensures comfortable gripping (Par. 0057) and combining prior art elements according to known methods is obvious with predictable results. See MPEP 2143(I)(A). Further, it has been held to be within the ordinary skill of worker in the art to select a known material on the basis of its suitability for the intended use.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreland (US 201500336238) in view of Schwarz (US 20220376584).
Regarding claim 8, Moreland discloses the limitations of claim 6 as set forth in the above 102 rejection. However, Moreland does not explicitly disclose that the adjustment mechanism includes a potentiometer with a rotating contact forming an adjustable voltage divider, or two push buttons, one for increasing and another one for decreasing the speed of the electric motor.
Moreland and Schwarz are analogous prior art because both describe handheld tools with trigger switches. Schwarz teaches a switch with a potentiometer (Par. 0062) having a rotating contact (Par. 0062 describes the contact tracking through the surface as the switch in figure 22 is rotated) forming an adjustable voltage divider (Par. 0062). Schwarz describes that the switch allows for variable speed adjustment of the system (Par. 0066) and as both Schwarz and Moreland show triggers for rotary machines the switch of Schwarz would be compatible with the tool of Moreland. Thereby, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the variable speed switch of Schwarz with the potentiometer, rotating contact, and voltage divider in the trigger of Moreland because the switch allows for variable speed adjustment of the system (Par. 0066).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreland (US 201500336238) in view of Duernegger (US 20190389020).
Regarding claim 11, Moreland discloses the limitations of claim 10 as set forth in the above 102 rejection. However, Moreland does not explicitly disclose that the angular gear arrangement has a transmission ratio of larger than one.
Moreland and Duernegger are analogous prior art because both show handheld grinders. Duernegger teaches providing a gear transmission with a transmission ratio of 3.73 (Par. 0019). Moreland describes a transmission for a grinder between the motor and the grinder wheel but does not choose the transmission ratio so one of ordinary skill in the art would have to choose a suitable ratio. Duernegger describes that the ratio allows for the motor to rotate faster than the tool attached to the shaft with this ratio which would naturally provide more torque on the tool and provide more effectiveness (Par. 0019). Further, as both Moreland and Duernegger show grinder wheel structures, the reduction ratio of Duernegger would provide predictable results in the transmission of Moreland. Thereby, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the transmission ratio of 3.73 as taught by Duernegger as the transmission ratio of Moreland because the ratio allows for the motor to rotate faster than the tool attached to the shaft with this ratio which would naturally provide more torque on the tool and provide more effectiveness (Par. 0019) and combining prior art elements according to known methods is obvious with predictable results. See MPEP 2143(I)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE C RIBADENEYRA whose telephone number is (469)295-9164. The examiner can normally be reached Mon-Fri 9:00-5:00 (CT).
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/THEODORE C RIBADENEYRA/ Examiner, Art Unit 3745