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 .
Specification
The amended statement of incorporation by reference to International Application No. PCT/US2022/072522 is ineffective because it was added on the date of entry into the U.S. national phase, which is after the filing date of this application. The filing date of this U.S. national stage application is the filing date of the associated international application, which is 05/24/2022. MPEP § 1893.03(b). Thus, the specification amendment of 11/22/2023 and 05/22/2026 includes new matter. MPEP § 608.01(p)(I)(B). To be clear, the objection is not to the priority claim; the objection is only with respect to the incorporation-by-reference statement to the International Application.
Applicant is required to cancel the new matter in the reply to this Office action.
Claim Objections
Claim 5 is objected to because of the following informalities:
“such that the cleaning element is clocked” (line 3) should be changed to --such that each of the plurality of cleaning elements is clocked--.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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 8 and 10 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.
Claim 8 recites the limitation “wherein the base portion of the cleaning element comprises”. This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, does “the cleaning element” in this context refer to “a cleaning element” of claim 7; or does this refer to “each of the plurality of cleaning elements” (claim 1); or does this refer to some subset of the plurality of cleaning elements? For examination purposes, this limitation is interpreted as best understood.
Claim 10 recites the limitation “wherein each cleaning element of the plurality of cleaning elements extends from the bottom surface of the base at an angle between about 25 degrees to about 75 degrees.” This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, there is no reference for the recited angle range; that is, the angle between about 25 degrees to about 75 degrees is relative to what? For examination purposes, this limitation is interpreted as best understood.
Claim Rejections – 35 U.S.C. § 102
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.
Nabeya
Claims 1, 4-7, and 9 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 20040048557 A1 (“Nabeya”).
Regarding claim 1, Nabeya discloses a brush assembly for a floor machine (Figs. 2C, 3-4; ¶¶ 0025-0029, brush assembly 10 is capable of being used in a floor polishing machine; 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)), comprising:
a base having a top side attachable to a floor machine and a bottom side opposite the top side (Figs. 2C, 3-4; ¶¶ 0025-0029, base 2 has a top side (bottom of Fig. 2C) that is capable of being attached to a floor machine, and a bottom side opposite the top side; 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));
an annular moat recessed within the bottom side (Figs. 2C, 3-4; ¶¶ 0025-0029, annular moat comprised of pocket segments 7e underneath elements 5 recessed within the bottom side of base 2);
a curable material contained within the annual moat recessed within the bottom side (Figs. 2C, 3-4; ¶¶ 0028, 0039, 0053, cleaning elements 5 are secured within the annular moat via attachment to element 7 using epoxy 8 (a curable material); Examiner notes that epoxy 8 is within the annular moat 7e as shown in Fig. 4 in the configuration without spacers 7d (see middle cleaning element 5 with similar epoxy layer (unlabeled)));
and a plurality of cleaning elements each including a base portion and an abrasive portion connected to the base portion (Figs. 2C, 3-6; ¶¶ 0025-0029, 0039-0040, 0053, each cleaning element 5 includes base portion 52 and abrasive portion 50/51 connected to the base portion 52);
wherein each base portion of each of the plurality of cleaning elements is secured to the base within the annular moat by the curable material and extending such that each abrasive portion extends from the bottom side of the base (Figs. 2C, 3-4; ¶¶ 0028, 0039, 0053, each base portion 52 is secured to base 2 within annular moat 7e using epoxy 8 (attaching to intermediate element 7a, which is secured to base 2 via element 7b), abrasive portion 50/51 extends as recited).
Regarding claim 4, Nabeya discloses the brush assembly of claim 1 as applied above and further discloses wherein the abrasive portion of each cleaning element is overmolded to a distal end of the base portion of such cleaning element (Figs. 2C, 3-4, 6; ¶¶ 0025-0029, 0039-0040, 0050-0051, abrasive portion 50/51 is adhered to the distal end of the base portion 52; the term “overmolded” is interpreted to include adhered or attached (Spec. ¶ 0032)).
Regarding claim 5, Nabeya discloses the brush assembly of claim 1 as applied above and further discloses wherein each of the plurality of cleaning elements is oriented along an axis that is angled in relation to a radius of the base such that [each of the plurality of] cleaning element[s] is clocked to face outward from a peripheral sidewall to push debris outside of a footprint of the brush assembly (Fig. 2C, each cleaning element 5 is oriented along an axis (e.g., see annotated Fig. 2C below, axis is connected to the midpoints of the ends of cleaning element 5) that is angled relative to a radius of base 2, and each cleaning element 5 is “clocked” to face outward from a peripheral sidewall (outer circumferential surface of base 2) and is capable of the recited function (e.g., when attached to a floor machine and rotated against a dirty floor); Examiner notes that the meaning of “clocked” includes oriented and positioned; Examiner also notes that this claim does not specify which surface of the cleaning element is facing outward as recited; see Spec. Fig. 2B; ¶ 0026 for interpretation of “clocked to face outward from a peripheral sidewall”).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (These outer edge portions of the cleaning element 5 is “clocked” to face outward as recited)][AltContent: arrow][AltContent: textbox (“An axis”)][AltContent: arrow]
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Nabeya Fig. 2C (annotated)
Regarding claim 6, Nabeya discloses the brush assembly of claim 1 as applied above and further discloses a plurality of pockets disposed within the annular moat, each pocket configured to receive a cleaning element of the plurality of cleaning elements (Figs. 2C, 3-4, 6; ¶¶ 0025-0029, pockets 7e and/or /7c are capable of receiving a cleaning element 5).
Regarding claim 7, Nabeya discloses the brush assembly of claim 1 as applied above and further discloses a plurality of pocket sets disposed within the annular moat, wherein each pocket of a pocket set is configured to receive a base portion of a cleaning element of the plurality of cleaning elements (Figs. 2C, 3-4, multiple pocket sets, each consisting of pockets 7e/7c, each of pockets 7e/7c is capable of receiving a base portion 52 (via elements 7a/7b)).
Regarding claim 9, Nabeya discloses the brush assembly of claim 1 as applied above and further discloses wherein each pocket set includes a pocket set axis that is offset at an angle from a radius of the base. (Figs. 2C, 3-4, each pocket set has an axis (e.g., the vertical axis of element 7b (Fig. 4)), which is offset at an angle from a radius of base 2 (e.g., offset at 90 degrees to radius of base 2 in Fig. 2C)).
Response to Amendment
Applicant’s Amendment and remarks have been considered.
Specification – Despite Applicant’s amendment, the objection to the specification is sustained. There are two problems with the amendment. First, the amendment filed 05/22/2026 does not take into account the latest version of paragraph 0001, which was amended in the 11/22/2023 Preliminary Amendment. Second, as currently amended, there is an ambiguity as to whether the incorporation by reference statement pertains to the International application or the U.S. provisional application, or both. Examiner suggests a rewrite of the entire paragraph 0001 to clearly state that the incorporation by reference statement applies only to the U.S. provisional application. Examiner also suggests the use of multiple sentences.
Claims – The objections to the claims are withdrawn in view of Applicant’s amendments. In light of Applicant’s claim amendments, the § 112(b) rejections are withdrawn.
Claims 2-3 have been canceled. Claims 1 and 4-15 are pending. Claims 11-15 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 1 and 4-10 are rejected.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Applicant’s arguments regarding claims 1, 5, and 6 are addressed in the rejections 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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