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 .
Information Disclosure Statement
The Information Disclosure Statements filed on 12/19/2023, 8/14/2024, 4/8/2025, and 9/18/2025 are being considered by the Examiner.
Claim Objections
Claim 11 is objected to because of the following informalities:
Regarding claim 11, in the preamble, please add a comma, see “a blade holder with lateral holding parts, at least one of which being movable relative to the other”.
Appropriate correction is required.
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 12, 13, and 17 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.
Regarding claim 12, claim 12 recites “wherein the lateral holding parts comprise a fixed part and a movable part”. Claim 11, from which claim 12 depends, recites “at least one of the lateral holding parts relative to the other”. The antecedent correlation between the recitations of claim 11 and 12 is not clear. Please amend claim 12 to reflect consistent claim language. Additionally, claim 12 recites “a gripping gap”, which is also recited in independent claim 11.
Regarding claim 13, claim 13 recites “wherein the lateral holding parts comprise a fixed part and a movable part”. Claim 11, from which claim 13 depends, recites “at least one of the lateral holding parts relative to the other”. The antecedent correlation between the recitations of claim 11 and 13 is not clear. Please amend claim 13 to reflect consistent claim language. Additionally, claim 13 recites “a gripping gap”, which is also recited in independent claim 11.
Regarding claim 17, claim 17 recites “specifying the thickness of the ice skate blades..”, wherein claim 14, from which claim 17 depends, recites “a thickness of each ice skate blade”. Claim 17 narrows in on a cumulative thickness, but uses the same language antecedently as claim 14. Please amend claim 17 to differentiate and clarify antecedent bases.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11, 14, 17-19, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-8 of U.S. Patent No. 11,878,396. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 12, 13, 15, 16, and 20-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-8 of U.S. Patent No. 11,878,396 in view of Strain (US 5,601,473).
Please see the below claim comparison for details.
Instant Application
US 11,878,386
11. A computer-implemented method of operating an ice skate blade sharpening apparatus having a blade holder with lateral holding parts at least one of which being movable relative to the other, the method comprising:
causing a motor to move at least one of the lateral holding parts relative to the other to grip a set of ice skate blades placed therebetween;
monitoring a torque or force generated by the motor;
upon determining that the torque or force generated by the motor has reached a threshold torque value or threshold force value, determining a gripping gap between the lateral holding parts;
determining a number of ice skate blades in the set based at least in part on the gripping gap; and
outputting the determined number of ice skate blades via a user interface or storing the determined number of ice skate blades in a memory.
(Wherein the dependency of patent claim 8 includes the scope of claims 1 and 4-8; please see claim comparison below)
Claim 8:
causing a motor to move at least one of the lateral holding parts relative to the other to grip the set of one or more ice skate blades placed therebetween;
monitoring torque or force generated by the motor;
upon determining that the torque or force generated by the motor has reached a threshold torque value or threshold force value, determining a gripping gap between the lateral holding parts;
determining a number of ice skate blades in the set based at least in part on the gripping gap; and
outputting the determined number of ice skate blades via a use interface or storing the determined number of ice skate blades in a memory.
12. The method of claim 11,
wherein the lateral holding parts comprise a fixed part and a movable part,
wherein the blade holder further comprises a rotatable bolt in engagement with a block coupled to the movable part and wherein said determining a gripping gap between the lateral holding parts is based on a number of rotations of the bolt.
Claim 8:
wherein the blade holder includes lateral holding parts at least one of which being movable relative to the other
Strain (US 5601473):
see clamp 44 moved along slots 46 using a clamp motor 48 coupled to each slide 44 through the use of screw drives 49, as well as the revolution and pitch of screws 49; see Col. 5, lines 7-18 and 42-47.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the claims of the patent to include a method of measurement via screw drives. One would be motivated to do so because incorporation of the determination method would not require additional or bulky structure, as the movement provided by the motors themselves would assist in determination, and would be recognized as using a known technique to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success. See also Col. 6, lines 3-11.
13. The method of claim 11, wherein the lateral holding parts comprise a fixed part and a movable part,
wherein the blade holder further comprises a position sensor configured to sense a position of the movable part and wherein said determining a gripping gap between the lateral holding parts is based on an output of the position sensor.
Claim 8
wherein the blade holder includes lateral holding parts at least one of which being movable relative to the other
Strain (US 5601473):
see clamp 44 moved along slots 46 using a clamp motor 48 coupled to each slide 44 through the use of screw drives 49, as well as the revolution and pitch of screws 49; see Col. 5, lines 7-18 and 42-47, as well as Col. 8, line 63-Col. 9, line 1-18.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the claims of the patent to include a method of measurement via screw drives, which is a form of position sensing. One would be motivated to do so because incorporation of the determination method would not require additional or bulky structure, as the movement provided by the motors themselves would assist in determination, and would be recognized as using a known technique to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success. See also Col. 6, lines 3-11.
14. The method of claim 11, wherein said determining the number of ice skate blades is based on a thickness of each ice skate blade in the set of ice skate blades.
5. The ice skate blade sharpening apparatus of claim 4, wherein the processor is configured for determining the total width of the set of one or more ice skate blades.
6. The ice skate blade sharpening apparatus of claim 5, wherein said determining the total width of the set of one or more ice skate blades is based on a number of ice skate blades in the set of one or more ice skate blades.
7. The ice skate blade sharpening apparatus of claim 6, wherein the processor is configured for determining the number of ice skate blades in the set of one or more ice skate blades.
15. The method of claim 14, further comprising receiving input from a user of the apparatus specifying the thickness of one or more of the ice skate blades in the set of ice skate blades.
Strain (US 5601473):
See user input means 106, as well as Col. 8, lines 42-62, Col. 10, lines 13-55.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a user input means, as taught by Strain, into the patented claims. One would be motivated to do so in order to allow a user to dictate the initial type and end goal, thus increasing flexibility and customer satisfaction (see Col. 8, lines 23-33).
16. The method of claim 14, wherein said determining the number of ice skate blades is further based on an initial distance between the lateral holding parts of the blade holder.
Strain (US 5601473):
see clamp 44 moved along slots 46 using a clamp motor 48 coupled to each slide 44 through the use of screw drives 49, as well as the revolution and pitch of screws 49; see Col. 5, lines 7-18 and 42-47, as well as Col. 8, line 63-Col. 9, line 1-18.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the claims of the patent to include a method of measurement via screw drives, which is a form of position sensing. One would be motivated to do so because incorporation of the determination method would not require additional or bulky structure, as the movement provided by the motors themselves would assist in determination, and would be recognized as using a known technique to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success. See also Col. 6, lines 3-11.
17. The method defined of claim 16, further comprising:
receiving an input specifying the thickness of the ice skate blades; and
receiving an input specifying the initial distance between the lateral holding parts of the blade holder.
4. The ice skate blade sharpening apparatus of claim 1, wherein the distance of the at least first portion of the width of the abrasive belt is equivalent to a total width of the set of one or more ice skate blades.
5. The ice skate blade sharpening apparatus of claim 4, wherein the processor is configured for determining the total width of the set of one or more ice skate blades.
Claim 8
determining a gripping gap between the lateral holding parts (…)
18. The method of claim 11, wherein the set of ice skate blades includes at least two ice skate blades and wherein the method further comprises simultaneously sharpening at least two of the ice skate blades in the set of ice skate blades.
Claim 1
a processor configured for:
causing the first grinding portion of the abrasive belt to be applied against the set of one or more ice skate blades to sharpen the one or more ice skate blades; and
controlling the actuator so as to laterally shift the blade holder a distance of at least the first portion of the width of the abrasive belt, to prepare for sharpening of a second set of one or more ice skate blades with the second grinding portion of the abrasive belt.
Wherein the scope of claim 1 includes sharpening a first set comprising one or more ice skate blades, i.e. the claim scope encompasses the instant claims
19. The method of claim 11, wherein upon determining the number of ice skate blades in the set of ice skate blades, the method further comprises determining a final torque value or a final force value for holding the ice skate blades in the set of ice skate blades during a sharpening procedure, the final torque value or the final force value being based at least in part on the number of ice skate blades in the set of ice skate blades.
Claim 8
monitoring torque or force generated by the motor;
upon determining that the torque or force generated by the motor has reached a threshold torque value or threshold force value, determining a gripping gap between the lateral holding parts;
determining a number of ice skate blades in the set based at least in part on the gripping gap; and
outputting the determined number of ice skate blades via a use interface or storing the determined number of ice skate blades in a memory.
20. The method of claim 19, wherein upon determining the final torque value or the final force value for holding the ice skate blades in the set of ice skate blades during the sharpening procedure of the ice skate blades, the method further comprises narrowing the gripping gap between the lateral holding parts until the final torque value or the final force value is generated during the sharpening procedure of the ice skate blades in the set of ice skate blades placed between the lateral holding parts of the blade holder.
Strain (US 5601473):
wherein the motors (48) are automatically stopped when the load of each motor has exceeded a preset value representing the desired clamping force on the blades (Col. 8, line 63-Col. 9, line 18).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Strain to include a final force value correlating with the narrowed gripping gap. One would be motivated to do so in order to 1) accurately ascertain the distance therebetween and 2) ensure that the workpieces are not overly gripped or damaged. This modification would be recognized as using a kn9own technique to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success.
21. The method of claim 11, further comprising determining a grinding pressure to be applied to the set of ice skate blades during a sharpening procedure of the set of ice skate blades by a grinding device of the ice skate blade sharpening apparatus, the grinding pressure being based on the number of ice skate blades in the set of ice skate blades.
Strain (US 5,601,473)
Col. 9, lines 36-51:
Platform 42 is moved rearward (from the front of the machine) to locate the grinding wheels proximate the rear of each blade and then forward (toward the starting position) across each blade, while maintaining substantially constant force applied by the grinding wheels on the blades. The force exerted by each grinding wheel may be maintained either by monitoring each switch 126, or monitoring the load of each motor 92. Maintaining constant force on each skate blade while platform 42 is moved across the grinding wheels will cause each grinding wheel to ride along the surface of the bottom edge of each skate blade. Accordingly, by monitoring the vertical position (from the measured number of revolutions of the stepper motor 92 and the known pitch of screw drives 94) of each motor 92 for each position of the platform, a profile of each skate blade may be determined.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated determining a grinding pressure into the patent claims. One would be motivated to do so in order to ensure the desired profile and resurfacing of workpieces is performed, i.e. in order to avoid improper sharpening (see Col. 9, lines 52-59).
22. The method of claim 21, wherein upon determining the grinding pressure to be applied to the set of ice skate blades during the sharpening procedure of the ice skate blades, the method further comprises setting the grinding pressure to be applied to the set of ice skate blades during the sharpening procedure.
See the combination statement as applied to claim 21 above, as well as Strain: Col. 9, lines 23-59.
23. The method of claim 11, further comprising determining a speed of sideways movement of a contact wheel separated from an ice-contacting surface of the ice skate blades in the set of ice skate blades by a rotating abrasive belt of the ice skate blade sharpening apparatus, the speed of sideways movement of the contact wheel being based at least in part on the number of ice skate blades in the set of ice skate blades.
Strain: belted grinding devices, see Col. 6, lines 26-37; see Col. 7, lines 1-37 regarding the moving mechanisms for the griding devices, as well as motor 60, motors 92; see also Col. 8, lines 1-32.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the patent claims to incorporate control of the translation of the abrasive elements, as taught by Strain. One would be motivated to do so in order to provide a repeatable process which provides the necessary accuracy (Col. 7, lines 9-18), and to ensure proper alignment/grinding steps.
24. The method of claim 23, wherein upon determining the speed of sideways movement of the contact wheel, the method further comprises adjusting the speed of sideways movement of the contact wheel to the determined speed of sideways movement during the sharpening procedure of the ice skate blades.
Please refer to the combination statement as applied to claim 23 above, as well as Col 7, lines 1-50 and Col. 8, lines 1-32 and 43-50 of Strain.
25. The method of claim 11, wherein the force is a force per unit area.
Wherein the selection of units for the force to be a force per unit area would be obvious to one having ordinary skill in the art, as force is applied to an area and can be considered on a smaller scale (divided by area).
Allowable Subject Matter
Claim 11, and dependent claims therefrom, would be allowable if the above claim objections, Double Patenting Rejections, and 112(b) rejections were overcome.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 11:
Tatomir (US 2017/0320184) discloses a computer-implemented method of operating an ice skate blade sharpening apparatus having a blade holder with lateral holding parts at least one of which being movable relative to the other (see sharpening system 10, skate holder assembly 60 comprising an upper clamp portion 64, lower clamp portion 66, and control knob 68, see [0025]), the method comprising:
move at least one of the lateral holding parts relative to the other to grip a set of ice skate blades placed therebetween (see runners 70T, 70R placed between clamp portions 64, 66, see [0027] and Figure 1B).
However, the operation of sharpening/grinding the runner (70R) is done manually by using the adjacent template runner (70T), and thus Tatomir does not anticipate, teach, or suggest causing a motor to move at least one of the lateral holding parts relative to the other; monitoring a torque or force generated by the motor; upon determining that the torque or force generated by the motor has reached a threshold torque value or threshold force value, determining a gripping gap between the lateral holding parts; determining a number of ice skate blades in the set based at least in part on the gripping gap; and outputting the determined number of ice skate blades via a user interface or storing the determined number of ice skate blades in a memory. Furthermore, extensive modifications would be required in order to meet the claimed invention.
Strain (US 5601473) discloses a computer-implemented method of operating an ice skate blade sharpening apparatus having a blade holder with lateral holding parts at least one of which being movable relative to the other, the method comprising: causing a motor to move at least one of the lateral holding parts relative to the other to grip an ice skate blade placed therebetween (wherein clamps (44) which each hold a singular skate blade, and wherein the clamp motors (48) activate to slide the clamps (44) along slides (46) to clamp the skates on the platform (4), and wherein the clamps (44) force the opposite end of the blade (10) against back stop (52); monitoring a torque or force generated by the motor (wherein the motors (48) are automatically stopped when the load of each motor has exceeded a preset value representing the desired clamping force on the blades (Col. 8, line 63-Col. 9, line 6). Strain additionally teaches of holding two ice skate blades simultaneously during grinding (see clamps 44, Figure 5), however does not anticipate, teach, or disclose the lateral holding parts to grip a set of ice skate blades (plural) therebetween and having a gripping gap between the lateral holding parts such that both the ice skate blades are contained therein, wherein the number of ice skate blades is determined at least in part by the gripping gap holding the plural blades, and outputting the determined number of ice skate blades via a user interface or storing the determined number of ice skate blades in a memory.
Chan (US 2018/0028898) discloses a computer-implemented method of operating an ice skate blade sharpening apparatus having a blade holder with lateral holding parts at least one of which being movable relative to the other (see automated apparatus 52, grinding device 64, having a skate holder 60; [0050]: wherein the first skate contacting surface 118 is movable toward the second skate contacting surface 120, or vice versa, or the two are movable towards one another), the method comprising: causing a motor to move at least one of the lateral holding parts relative to the other to grip a set of ice skate blades placed therebetween ([0050]: see skate holder 60, having a first skate contacting surface 118 and a second skate contacting surface 120 which may be moved by an actuator in order to grip a workpiece therebetween; [0035]: wherein skate holder 60 can be configured to hold more than one ice skate 12, including a pair of skates); wherein a gripping gap is indirectly determined, and a user interface and a memory (wherein the gripping gap is indirectly determined by the measuring device 62 and data obtained by the measuring device and stored in memory 102, see [0051-0053]).
Chan does not anticipate, teach, or disclose monitoring a torque or force generated by the motor; upon determining that the torque or force generated by the motor has reached a threshold torque value or threshold force value, then determining a gripping gap, and determining a number of ice skate blades in the set based at least in part on the gripping gap; and outputting the determined number of ice skate blades.
Takanashi (US 6308431) discloses of a pair of jaw components (7a, 7b) and a sensor unit (20), therein the two jaw components (7a, 7b) may be opened and closed, and wherein the dimension of the workpiece gripped therein can be determined (see Col 4, lines 58-65), i.e. lateral holding parts and wherein a gripping gap is determined. However, Takanashi does not anticipate, teach, or suggest a motor for displacing the jaws in order to grip a set of ice skate blades placed therebetween, monitoring a torque or force generated by the motor; upon determining that the torque or force generated by the motor has reached a threshold torque value or threshold force value, determining a gripping gap between the lateral holding parts; determining a number of ice skate blades in the set based at least in part on the gripping gap; and outputting the determined number of ice skate blades via a user interface or storing the determined number of ice skate blades in a memory.
Extensive modifications including placing the apparatus within the context of an ice skate apparatus, incorporating a motor, and using the dimensions (i.e. gripping gap) to determine the number of ice skate blades would be required in order to teach the claimed invention.
Salberg (US 3,735,533) discloses a blade holder with lateral holding parts at least one of which being movable relative to the other (see blades 11 and 13, Figures 3 and 4 held between elements 31, 33, and 15), as well as a motor (see clamp motor CL, Col. 3, lines 34-67). However, Salberg does not anticipate or suggest monitoring a torque or force generated by the motor; upon determining that the torque or force generated by the motor has reached a threshold torque value or threshold force value, determining a gripping gap between the lateral holding parts; determining a number of ice skate blades in the set based at least in part on the gripping gap; and outputting the determined number of ice skate blades via a user interface.
Parnell (US 1,907,213) shows two ice skate blades being sharpened simultaneously, but does not teach additional subject matter lacking from the above prior arts, and is cited as herein for pertinence.
Thus, the prior art when taken alone or in combination, does not anticipate, teach, or suggest the combination of steps and elements disposed in and functioning as required by independent claim 11 as pointed out above, in combination with all additionally recited elements. Extensive modifications and combinations which would not have been obvious to one having ordinary skill in the art before the effective filing fate would be required in order to teach the claimed invention, i.e. a modification of a modification, or an extensive reconstruction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
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