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 .
Election/Restriction
Applicant’s election of Species 1 is acknowledged. Election was made without traverse in the reply filed on 02/04/2026. Claims 1-7 are pending. Claims 4 and 7 are withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention.
Priority
This application claims foreign priority to PCT/JP2022/026892. However, a certified copy of this foreign application was not filed. 37 C.F.R. § 1.55(f)(1). Applicant is advised that because the deadline for filing the certified copy under 37 C.F.R. § 1.55(f)(1) has passed, a petition would be required to remedy this issue. 37 C.F.R. § 1.55(f)(3).
Drawings
The drawings, specifically Figs. 4A-B, are objected to under 37 C.F.R. § 1.84(p)(3). Numbers, letters, and reference characters must measure at least 0.32cm (1/8in) in height and they should not be placed in the drawing so as to interfere with its comprehension: they should not cross or mingle with the lines; they should not be placed upon hatched or shaded surfaces; and when necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” in compliance with 37 C.F.R. § 1.121(d). No new matter should be entered. If the changes are not accepted by the examiner, Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because it uses the phrase “Provided is”. Correction is required. MPEP § 608.01(b). No new matter should be entered.
Claim Objections
Claims 1 and 3-6 are objected to because of the following informalities:
“the body portion” (claims 1, 3-6, all instances) should be changed to --the annular body portion-- (for clarity);
“outside of an outer periphery” (claim 6, line 12) should be changed to --outside an outer periphery--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. § 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“rotary member” (claim 1, line 2);
“drive means” (claim 6, line 2).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Claim Rejections – 35 U.S.C. § 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.
Nishibori in view of Kim
Claims 1-3 and 5-6 are rejected under 35 U.S.C. § 103 as being unpatentable over JP 4428858 B2 (“Nishibori”) in view of KR 20120058791 A (“Kim”) (citations are to the translations filed herewith).
Nishibori pertains to a surface treatment apparatus (Figs. 1-7; ¶¶ 0001-0009). Kim pertains to a surface treatment apparatus (Abstr.; Figs. 1-13). These references are in the same field of endeavor.
Regarding claim 1, Nishibori discloses a surface treatment member used by being mounted on a rotary member in a surface treatment system including the rotary member (Figs. 1-5, surface treatment system (as shown in Fig. 1) with surface treatment member (elements 3, 4, 5) mounted on rotary member 1a including shaft 1; this limitation is interpreted under § 112(f), which includes element 110 with a mounting portion 112, and equivalents thereof (Spec. Fig. 5B; ¶ 0037)),
the surface treatment member comprising:
a base being rotatably mountable on the rotary member (Figs. 1-5, base 3 is rotatably mounted on rotary member 1a via shaft 1);
a striking member having an annular body portion and a protruding portion that protrudes from the body portion, the striking member configured to impinge on a surface treatment object and to impart an impact to the surface treatment object when using (Figs. 1-5, striking member with annular body portion 5 and protruding portion 5a is capable of the recited function; ¶¶ 0021-0022, 0036-0040 (Examples 1 and 2));
and a shaft member disposed in a region on an inner side of the body portion, and being fixed to the base (Figs. 1-5, shaft 4 in region/hole 5b of annular body portion 5 fixed to base 3),
wherein when the surface treatment member is viewed along an imaginary axis about which the base is to be rotated, a portion of the striking member is configured to be exposed outside an outer periphery of the base by a centrifugal force when the surface treatment member is rotated, and...the striking member is retractable toward inside an imaginary circle that passes over an outermost periphery of the base about the imaginary axis after the striking member impinges on the surface treatment object (Figs. 1-5; ¶ 0017, striking member with annular body portion 5 and protruding portion 5a protrudes beyond the periphery of base 3 when rotated (Figs. 3-4) due to centrifugal force, and the striking member is retractable toward inside the circumference of base 3 upon impingement with an object (Figs. 3-4); ¶¶ 0029-0035).
Nishibori does not explicitly disclose:
wherein...an entirety of the striking member is retractable toward inside an imaginary circle that passes over an outermost periphery of the base about the imaginary axis after the striking member impinges on the surface treatment object.
However, the Nishibori/Kim combination makes obvious this claim.
Kim discloses wherein...an entirety of the striking member is retractable toward inside an imaginary circle that passes over an outermost periphery of the base about the imaginary axis after the striking member impinges on the surface treatment object (Figs. 4-7, striking members 10 are retractable toward inside the circumference of base 5 upon impingement with an object).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Kim with Nishibori by modifying the Nishibori device so that the entirety of the striking members is retractable inside the circumference of base 3 as recited, for example, by modifying the striking members (e.g., width of annular body portion 5, size of hole 5b), the shaft 4 (e.g., location or size of shaft), and/or the base 3 (e.g., radial size and circumference). This would have been obvious to a person of ordinary skill in the art because this would prevent damage to the striking members and/or the workpiece when the base of the tool is being positioned into place (e.g., when being inserted axially into a pipe), because the structure of base 3 would absorb any contact while the striking members are recessed within the circumference of base 3 (Nishibori ¶ 0030, “in the case where the magnet 6 is provided around the main support shaft 1, since the ring-shaped cutters [5] are attracted toward the center, the ring-shaped cutters [5] do not interfere with the insertion of the stopped rotating substrate 3 into the pipe 10, and the operation is facilitated.”). Examiner notes that Kim, like Nishibori, discloses a striking member 10c having an annular body portion and a protruding portion 12c that protrudes from the body portion (Kim Fig. 3d) that is interchangeable with the other designs for striking members (Kim Figs. 3a-c, 4-7).
Applicant has not disclosed that having the entirety of the striking member retractable inside the periphery of the base as recited (as opposed to having only a portion of the striking member retractable inside the periphery of the base) provides an advantage, solves any stated problem, or is used for any particular purpose and it appears that the device would perform equally well with other designs, depending on the size of the device in view of the size of workpiece (e.g., its inner diameter). Furthermore, absent a teaching as to criticality of this configuration as claimed, this particular arrangement is deemed to have been known by those skilled in the art since the specification and evidence of record fail to attribute any significance (novel or unexpected results) to this particular arrangement. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Regarding claim 2, the Nishibori/Kim combination makes obvious the surface treatment member of claim 1 as applied above.
Nishibori further discloses wherein, when the surface treatment member is viewed along the imaginary axis, the outer periphery of the base is formed in a circular shape about the imaginary axis (Figs. 1-5, base 3 has a circular shape as recited).
As modified in the Nishibori/Kim combination, the limitation “an entirety of the striking member is retractable toward inside the outer periphery of the base after the striking member impinges on the surface treatment object” is satisfied.
The obviousness rationale for claim 2 is the same as for claim 1.
Regarding claim 3, the Nishibori/Kim combination makes obvious the surface treatment member of claim 1 as applied above.
Nishibori further discloses wherein the striking member includes a plurality of the protruding portions, and the protruding portions are disposed at an equal interval on an outer periphery of the body portion (Fig. 5, protruding portions 5a are disposed at equal intervals as recited).
Regarding claim 5, the Nishibori/Kim combination makes obvious the surface treatment member of claim 1 as applied above.
Nishibori further discloses wherein when the surface treatment member is viewed along the imaginary axis, the protruding portion is formed in an asymmetrical shape with respect to an imaginary line that connects a center of the body portion and a distal end of the protruding portion (Fig. 5, protruding portions 5a are asymmetrical in the radial direction as shown).
Regarding claim 6, Nishibori discloses a surface treatment system (Figs. 1-5, surface treatment system (as shown in Fig. 1)) comprising:
a rotary member that is rotatable by a drive means; and a surface treatment member that is mounted on the rotary member (Figs. 1-5, surface treatment member (elements 3, 4, 5) is mounted on rotary member 1a including shaft 1 and motor 8; the limitation “rotary member” is interpreted under § 112(f), which includes element 110 with a mounting portion 112, and equivalents thereof (Spec. Fig. 5B; ¶ 0037); the limitation “drive means” is interpreted under § 112(f), which includes a drive unit that includes a gear, belt, or shaft, and equivalents thereof (Spec. Fig. 5B; ¶ 0037)),
wherein the surface treatment member includes:
a base being rotatably mountable on the rotary member (Figs. 1-5, base 3 is rotatably mounted on rotary member 1a via shaft 1);
a striking member having an annular body portion and a protruding portion that protrudes from the body portion, the striking member configured to impinge on a surface treatment object and to impart an impact to the surface treatment object when using (Figs. 1-5, striking member with annular body portion 5 and protruding portion 5a is capable of the recited function; ¶¶ 0021-0022, 0036-0040 (Examples 1 and 2));
and a shaft member disposed in a region on an inner side of the body portion, and being fixed to the base (Figs. 1-5, shaft 4 in region/hole 5b of annular body portion 5 fixed to base 3),
wherein when the surface treatment member is viewed along a rotary axis of the rotary member, a portion of the striking member is configured to be exposed outside [] an outer periphery of the base by a centrifugal force when the surface treatment member is rotated, and...the striking member is retractable toward inside an imaginary circle that passes over an outermost periphery of the base about the imaginary axis after the striking member impinges on the surface treatment object (Figs. 1-5; ¶ 0017, striking member with annular body portion 5 and protruding portion 5a protrudes beyond the periphery of base 3 when rotated (Figs. 3-4) due to centrifugal force, and the striking member is retractable toward inside the circumference of base 3 upon impingement with an object (Figs. 3-4); ¶¶ 0029-0035).
Nishibori does not explicitly disclose:
wherein...an entirety of the striking member is retractable toward inside an imaginary circle that passes over an outermost periphery of the base about the imaginary axis after the striking member impinges on the surface treatment object.
However, the Nishibori/Kim combination makes obvious this claim.
Kim discloses wherein...an entirety of the striking member is retractable toward inside an imaginary circle that passes over an outermost periphery of the base about the imaginary axis after the striking member impinges on the surface treatment object (Figs. 4-7, striking members 10 are retractable toward inside the circumference of base 5 upon impingement with an object).
The obviousness rationale for claim 6 is the same as for claim 1.
Status of Claims
Claims 1-7 are pending. Claims 4 and 7 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention.
Claims 1-3 and 5-6 are rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
KR 101366504 B1 (“Kang”) discloses a surface treatment device (Abstr.; Figs. 1-10);
KR 20090009349 A (“Kim2”) discloses a surface treatment device (Abstr.; Figs. 1-7).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723