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 .
Priority
This application claims foreign priority to PCT/JP2022/026892 (as well as domestic priority to PCT/JP2023/006331). Upon further consideration, it appears that this priority claim is improper. Under MPEP § 211.01(c), an international application designating the United States has the effect of a national application regularly filed at the USPTO. Therefore, this application should claim domestic priority to PCT/JP2022/026892. It is Examiner’s understanding that Applicant must file a petition to make this correction. MPEP §§ 211.02(a), 211.03, 211.04, 601.05(a)(II).
Drawings
Although the drawings, specifically amended Figs. 4A-B, are sufficiently clear for examination purposes, they are compromised in terms of clarity. That is, due to the submitted format of the drawings, Figs. 4A-B are dithered and in grayscale/halftones, where lines and text intended to be solid, clean, and black appear jagged and grayed. This loss of quality can be seen by comparing the amended Figs. 4A-B filed 06/15/2026 with the version of Figs. 4A-B in the DRW.SUPP file filed on 11/30/2023. It appears that the amended Figs. 4A-B filed 06/15/2026 are a low resolution, bitmap, and resized version of the original vector drawings filed on 11/30/2023.
The drawings are not objected to at this time for clarity. Nevertheless, Examiner suggests submitting clearer drawings for the purpose of proper notice to the general public. Applicant should note the following drawing standards:
Black and white drawings are normally required; India ink, or its equivalent that secures solid black lines, must be used for drawings. 37 C.F.R. § 1.84(a)(1);
Every line, number, and letter must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined, and the weight of all lines and letters must be heavy enough to permit adequate reproduction. 37 C.F.R. § 1.84(l);
The clarity of the drawings must be sufficient for clear reproduction to two-thirds size. 37 C.F.R. § 1.84(k).
For examples of acceptable drawing clarity and quality, see US 20220362902 A1, US 20230076152 A1, US 20230286103 A1, and US 20240009795 A1. Examiner suggests outputting and resubmitting the drawings as vector graphics and uploading them to USPTO Patent Center as “Drawings-other than black and white line drawings”, which should cause the filed image file to be stored in the SCORE database without any image conversion.
Claim Objections
Claim 6 is objected to because of the following informalities:
“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; claim 6, line 1);
“drive means” (claim 1, line 3; 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 1-2 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 on 02/24/2026).
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 for surface preparation used by being mounted on a rotary member in a surface treatment system including the rotary member connected to a drive means that generates a rotating force (Figs. 1-5, surface treatment system (as shown in Fig. 1) with surface treatment member (elements 3, 4, 5) is capable of surface preparation (e.g., abrading an inner surface of a pipe) and is mounted on rotary member 1, which is connected to motor 8 that generates a rotating force; 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); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)),
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 1);
a striking member having an annular body portion, a through hole formed on an inner side of the annular body portion, and a protruding portion that protrudes from the annular body portion and has a distal end with an acute angle shape, 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 5 with annular body portion and through hole 5b on inner side, and protruding portion 5a with distal end having an acute angle shape (as shown in Fig. 5), is capable of the recited function; ¶¶ 0021-0022, 0036-0040 (Examples 1 and 2));
and a shaft member disposed in the through hole of the annular body portion, and being fixed to the base (Figs. 1-5, shaft 4 in hole 5b of annular body portion 5 is fixed to base 3),
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 annular body portion (Figs. 1-5, the protruding portions 5a are disposed at equal intervals on the outer periphery of the annular body portion (as shown in Fig. 5)),
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...
when the surface treatment member is viewed along an imaginary axis about which the base is to be rotated, a shortest distance from the distal end of the protruding portion to an inner periphery of the through hole is shorter than a shortest distance from an outer periphery of the shaft member to an imaginary circle that passes over an outermost periphery of the base about the imaginary axis,
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 and prevent damage to the striking members (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). With this Nishibori/Kim combination, the limitation “a shortest distance from the distal end of the protruding portion to an inner periphery of the through hole is shorter than a shortest distance from an outer periphery of the shaft member to an imaginary circle that passes over an outermost periphery of the base about the imaginary axis” would be satisfied because in order for the entirety of the Nishibori annular striking members to be entirely retractable inside the circumference of base 3 as modified above, the “shortest distance from the distal end of the protruding portion to an inner periphery of the through hole” is necessarily shorter than the “shortest distance from an outer periphery of the shaft member” to the “outermost periphery of the base”.
Despite the teachings of Nishibori and Kim above, 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 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 annular body portion and a distal end of the protruding portion (Fig. 5, as shown, protruding portions 5a are asymmetrical as recited).
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 that generates a rotating force; and a surface treatment member that is mounted on the rotary member for surface preparation (Figs. 1-5, surface treatment member (elements 3, 4, 5) is capable of surface preparation (e.g., abrading an inner surface of a pipe) and is mounted on rotary member 1 and motor 8 that generates a rotating force; 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); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)),
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 1);
a striking member having an annular body portion, a through hole formed on an inner side of the annular body portion, and a protruding portion that protrudes from the annular body portion and has a distal end with an acute angle shape, 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 5 with annular body portion and through hole 5b on inner side, and protruding portion 5a with distal end having an acute angle shape (as shown in Fig. 5), is capable of the recited function; ¶¶ 0021-0022, 0036-0040 (Examples 1 and 2));
and a shaft member disposed in the through hole of the annular body portion, and being fixed to the base (Figs. 1-5, shaft 4 in hole 5b of annular body portion 5 is fixed to base 3),
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 annular body portion (Figs. 1-5, the protruding portions 5a are disposed at equal intervals on the outer periphery of the annular body portion (as shown in Fig. 5)),
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 rotary 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...
when the surface treatment member is viewed along a rotary axis of the rotary member, a shortest distance from the distal end of the protruding portion to an inner periphery of the through hole is shorter than a shortest distance from an outer periphery of the shaft member to an imaginary circle that passes over an outermost periphery of the base about the rotary axis,
an entirety of the striking member is retractable toward inside an imaginary circle that passes over an outermost periphery of the base about the rotary 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 rotary 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. As in claim 1, with this Nishibori/Kim combination, the limitation “a shortest distance from the distal end of the protruding portion to an inner periphery of the through hole is shorter than a shortest distance from an outer periphery of the shaft member to an imaginary circle that passes over an outermost periphery of the base about the rotary axis” would be satisfied.
Response to Amendment
Applicant’s Amendment and remarks have been considered.
Drawings – The objections to the drawings are withdrawn in view of Applicant’s amendments. However, see the clarity advisory above.
Specification – The objection to the abstract is withdrawn in view of Applicant’s amendment.
Claims – The objections to the claims are withdrawn in part and sustained in part (see above). Applicant is cautioned that claim amendments must include a correct status identifier for each claim. 37 C.F.R. § 1.121(c); MPEP § 714(II)(C). Claims 4 and 7 should be identified as “withdrawn”.
Claim 3 has been canceled. Claims 1-2 and 4-7 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. Examiner notes that withdrawn claim 4 improperly depends from canceled claim 3.
Claims 1-2 and 5-6 are rejected.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive for the reasons discussed in the rejections of claims 1 and 6 above. As an initial matter, Examiner disagrees with Applicant’s characterization of Nishibori (Reply at 8). Particularly, Examiner disagrees that “Nishibori explicitly teaches away from acute angle tips” (Reply at 8). As explained in the rejections of claims 1 and 6 above, Nishibori explicitly discloses the limitation “a protruding portion that protrudes from the annular body portion and has a distal end with an acute angle shape”. There is no modification of the shape of these protrusions in the proposed Nishibori/Kim combination. Further, even if the Nishibori protrusions 5a have a helical configuration (Reply at 8), the limitation “a protruding portion that protrudes from the annular body portion and has a distal end with an acute angle shape” is still satisfied (Nishibori Fig. 5a).
With respect to Kim and the proposed modification with Nishibori, Applicant’s argument that there is no reason or teaching, suggestion, or motivation to combine the references relies on an incorrect understanding of obviousness under 35 U.S.C. § 103. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the explicit content of the cited references. The question is not whether a combination was obvious to the inventor or Applicant but whether the combination was obvious to a person of ordinary skill in the art before the effective filing date of the application. As discussed in the rejections of claims 1 and 6 above, Applicant’s argument fails because Applicant confounds the question of obviousness and neglects the KSR standard for a person of ordinary skill, which is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Under the correct analysis, any need or problem known in the field of endeavor at that time and addressed by the application can provide a reason for combining the elements in the manner claimed. KSR, 550 U.S. at 420-21; MPEP § 2145(X)(C).
Applicant’s arguments that the recited claims would be capable of particular functions or technical effects that the Nishibori/Kim combination would be incapable of (Reply at 8-9) are not persuasive because the structure of the Nishibori/Kim combination would be very similar to that of the recited claims, as discussed in the rejections of claims 1 and 6 above.
Applicant does not present any further arguments concerning the remaining claims.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee pursuant to 37 C.F.R. § 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 date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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