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 1-5 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 1, line 7 recites “…an annular elastic body which is attached to an outer wherein the annular elastic body has a…”. This is confusingly worded and unclear. What is the annular elastic body attached to? Additionally, the claim recites “circumference of the first roller,” after the period which ends the claim. It appears that this is a formatting error. For the purposes of this examination, line 7 of claim 1 will be read as “…an annular elastic body which is attached to an outer circumference of the first roller wherein the annular elastic body has a…”, as this appears to be applicant’s intent.
Claims 2-5 are rejected as indefinite due to their dependency upon rejected claim 1.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stahl (US 3890115, previously cited).
Regarding claim 1, Stahl discloses a belt machining device, which moves a machining belt relative to a workpiece to machine the workpiece, the belt machining device comprising: a first roller (4), which is a machining roller, a second roller (5), a machining belt (8) which is supported by the first roller and the second roller (as shown in fig 1), a rotational power generation unit (2) which rotates the first roller or the second roller (col 2, lines 14-18), an annular elastic body (44) which is attached to an outer circumference of the first roller (outer circumference of unlabeled hub shown in figs 1 and 3), wherein the annular elastic body has a slit formed at a predetermined depth from an outer surface thereof (fig 3a, 3b; slit between elements 44 forming elastic body extending entire depth) and an annular expansion prevention member (42) which is embedded into the slit of the elastic body (as shown in figs 3a, 3b; element 42 between elements 44) and which has an elastic modulus greater than the elastic body (as described col 3, lines 25-47), wherein the expansion prevention member has an outer diameter smaller than an outer diameter of the elastic body (as shown in fig 3b) during both machining and non-machining (note that the method of using the tool does not limit its structure; as shown in 3b and described col 3, lines 1-11, the outer diameter of the expansion prevention member is smaller than an outer diameter of the elastic body while the disc is rotated at speed. As the disc is capable of being rotated during machining of a workpiece, or without machining a workpiece, the conditions of the claim are met).
Regarding claim 2, Stahl further discloses a portion of the machining belt which engages with the first roller contacts a surface of the workpiece to machine the surface of the workpiece (function described col 2, lines 26-28).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stahl as applied to claim 1 above, and further in view of Kosonen (US 2014/0220871, previously cited).
Regarding claims 3-4, Stahl teaches all the elements of claim 1 as described above. Stahl does not teach the rotational power generation unit comprises a fluid pneumatic motor (the rotational power generation unit of Stahl is an electric motor rather than pneumatic). Kosonen teaches a belt machining apparatus including a rotational power generation unit (112) comprising a fluid motor, wherein the fluid motor is a pneumatic motor, and specifically states that pneumatic motors are interchangeable with electric motors ([0022]). It is obvious to substitute one known element for another to obtain predictable results (MPEP 2143 I. B.). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the pneumatic fluid motor of Kosonen in place of the electric motor in the belt machining device of Stahl, as these are known obvious alternatives which achieve the predictable result of providing rotational motion for a belt machining device as taught by Kosonen ([0022]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stahl as applied to claim 5 above, and further in view of Tozawa (US 2003/0126727, previously cited).
Regarding claim 5, Stahl teaches all the elements of claim 1 as described above. Stahl does not teach a holder which can be attached to a tip of a spindle of a machine tool (note that the structure of the machine tool is not necessary to meet the claim and only the claimed holder part is actively claimed as a part of the belt machining device). Tozawa teaches a belt machining device including a holder part (57) which can be attached to a tip of a spindle of a machine tool comprising the spindle (43; shown in fig 6), a table (45) which is arranged to face the spindle and to which a workpiece (31) is attached (fig 5), and a feed device (55) which moves the spindle and the table relative to each other ([0036]; note that the structure of the machine tool is not necessary to meet the claim and only the claimed holder part is actively claimed as a part of the belt machining device). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide a holder to the belt machining device of Stahl, the holder capable of being attached to the claimed machine tool, as this allows the belt machining device to be automatically controlled by the machining device to effect machining on the workpiece as taught by Tozawa ([0011], [0035]).
Response to Arguments
Applicant's arguments filed 13 Apr 2026 have been fully considered but they are not persuasive. Applicant argues that Stahl does not teach the newly recited limitations of the annular expansion prevention member having an outer diameter smaller than an outer diameter of the elastic body during both machining and non-machining, citing that Stahl’s roller must be rotated at high speed for this relationship to occur. However, as broadly claimed “during machining and non-machining” does not define over the disclosure of Stahl, as the rotation speed in Stahl which results in the claimed diameter relations may be achieved during machining, or without machining a workpiece. The manner of operating the device does not differentiate apparatus claims from the prior art (MPEP 2114 II). As the device of Stahl is capable of being used in the claimed manner, claim 1 is still anticipated by Stahl.
Applicant further argues that the invention achieves advantages over the disclosure of Stahl, such as features relating to rotational speed, belt tension, and ease of replacement. However, these argued advantages are not linked to any particular claim limitation and are therefore not persuasive.
Applicant’s amendments have overcome the previous rejection under 112b, but introduce new issues of clarity as detailed in the 112b rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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