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/Restrictions
Applicant's election with traverse of Species A, claims 1 – 8 in the reply filed on 8/25/2025 is acknowledged. The traversal is on the ground(s) that the Species are unclearly defined and how there is a burden. This is not found persuasive because the instant specification explicitly states these figures to embody distinct embodiments.
The requirement is still deemed proper and is therefore made FINAL.
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 2,069,700 A. N. Emmons (‘Emmons hereafter), Filed 06/22/1934
U.S. 3,421,411 R. D. Lowry et al. (‘Lowry hereafter), Filed 12/30/1966
U.S. 5,938,503 Cook et al. (‘Cook hereafter), App 08/977791 Filed 11/25/1997;
U.S. 6,213,694 Toyohiko Ichikawa (‘Ichikawa hereafter), App 09/251128 Filed 02/16/1999;
U.S. 2002/0166219 David et al. (‘David hereafter), App 09/851844, Filed 05/09/2001;
U.S. 2003/0002946 Yu-Fu Hsieh (‘Hsieh hereafter), App 09/894576
U.S. 2021/0170474 Chan et al. (‘Chan hereafter), App 17/182112, Filed 02/22/2021;
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 1 - 8 are currently being examined.
No Claims have been withdrawn.
No Claims have been canceled.
Claims 2 – 4 & 6- 8 are allowed or objected to for allowable subject matter.
Specification
The disclosure is objected to because of the following informalities: items 5c (Fig 7), 70b (Fig 5), 721b (Fig 5), 72b (Fig 5), 82a (Fig 4), 8a (Fig 4), are not recited in the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2003/0002946 Yu-Fu Hsieh (‘Hsieh hereafter), and further in view of U.S. 6,213,694 Toyohiko Ichikawa (‘Ichikawa hereafter),
Regarding Claim[s] 1, ‘Hsieh discloses all the claim limitations including: A deburring device for removing a burr formed on a joint of metal members joined together by friction stir welding (“by friction welding” is an intended use limitation (see below))(‘Hsieh, Abst, “A planing device for removing weld beads on car sheet metal, which comprises a handle, a cylinder cover and a support frame; the front end of the support frame is mounted with a round milling cutter; the inner side of the round milling cutter is furnished with a guide frame for adjusting the height between the bottom surface of the guide frame and the surface a sheet metal; when the round milling cutter is rotated at a high speed, the weld beads on a car sheet metal will be planed off.” ‘Hsieh, is capable of being used as a deburring device for removing a burr formed on a joint of metal member joined by friction stir welding),
the deburring device (‘Hsieh, #10 (plane tool/ deburring device)) comprising:
a deburrer (‘Hsieh, system of #43 (round milling cutter/ cutting blade), including:
a cutting blade (‘Hsieh, #43 (round milling cutter/ cutting blade)) that cuts the burr formed at the joint (‘Hsieh, Abst, Para 0016, teaches the weld beads on a car sheet metal will be planed off),
a drive mechanism that drives the cutting blade to rotate (‘Hsieh, Para 0016, “The front end of the handle 11 is connected with a cylinder cover 12, in which a pneumatic motor is mounted, and the outer end of a main shaft of the pneumatic motor is mounted with a gear 51 which is coupled with a gear 52, via a belt 53 with teeth, on a transmission shaft 25 so as to actuate a round milling cutter 43 mounted on the transmission shaft 25.”), and
Except ‘Hsieh, is silent regarding: a guide roller that has a diameter equal to or smaller than the cutting blade, is able to rotate coaxially with the cutting blade, and makes contact with a surface of the joined metal members at the joint to control an amount of cutting by the cutting blade.
However, ‘Ichikawa teaches: a guide roller (‘Ichikawa, #34 & #36 (guides/ guide rollers), Examiner interprets gliding, sliding as rolling, and #14 (rotary finisher)) that has a diameter equal to or smaller than the cutting blade (‘Ichikawa, Fig 7 shows #34 & #36 equal in diameter to the outside edges of #14 (rotary finisher)),
is able to rotate coaxially with the cutting blade (‘Ichikawa, Fig 2, shows #34, #36 and #14 are coaxial), and
makes contact with a surface of the joined metal members at the joint to control an amount of cutting by the cutting blade (‘Ichikawa, Fig 7);
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hsieh, with a guide roller equal to or less than the diameter of the cutting blade as taught by ‘Ichikawa in order to provide an adjustment of the cutting blade/ rotary finisher (‘Ichikawa, Col. 4, ln 4 – 23).
a mover that moves the deburrer along the joint (‘Hsieh, Para 0026, “A pressure plate 14 is furnished above the cylinder cover 12; the outer end of the pressure plate 14 has a screw hole for receiving a press knob 15 to facilitate a user's hand to hold upon 05 exerting pressure and directing moving direction during operation.” Mover is the user); and
an orientation controller that controls an orientation of the deburrer according to a shape of the surface of the joined metal members (‘Hsieh, Para 0029, “Hold the press knob 15 with hand to control the guide frame 38 of the plane tool to apply pressure and to move; the channel 42 between the two claws 40 and 41 of the guide frame 38 will move along the line of weld beads 69. When the bottom surface 44 of the two claws 40 and 41 moves along both sides of the weld beads 69, the space between the round milling cutter 43 and the weld beads 69 is limited. When the round milling cutter 43 turns quickly and contacts the weld beads 69, it can cut a portion of the weld beads 69 as a result of the press knob 15 being pressed; in that case, the reaction force of the planing operation is small without affecting the planing operation. When the plane tool moves along the line of weld beads 69, the space between the bottom surface 44 of the claws 40 and 41 can be adjusted gradually so as to plane off all the weld beads 69. The round milling cutter 43 on the shaft 31 of the transmission shaft 25 can be removed by using a wrench to remove the screw 46 and the shaft sleeve 45 first, and then is replaced with a grinding wheel or a polishing wheel so as to remove the weld beads completely without any scar left.” User controls the orientation).
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 a claim drawn to process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCCPA 1963).
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2003/0002946 Yu-Fu Hsieh (‘Hsieh hereafter), and further in view of U.S. 6,213,694 Toyohiko Ichikawa (‘Ichikawa hereafter), and in further view of U.S. 2021/0170474 Chan et al. (‘Chan hereafter).
Regarding Claim[s] 5, ‘Hsieh and ‘Ichikawa, discloses all the claim limitations except is silent regarding: a housing that houses the deburrer, wherein the housing has an opening formed at a bottom side to expose the guide roller and the cutting blade and a chip suction mechanism that sucks air from inside the housing to suck chips of a cut burr.
However, ‘Chan teaches: Para 0132, “With reference next to FIG. 9, an illustration of extending vacuum system 314 is depicted in accordance with an illustrative embodiment. As depicted, vacuum system 314 is moved in the direction of arrow 900. With this movement, vacuum system 314 extends such that end 802 of vacuum system 314 touches frame 604 at position 804. In this position, camera 316 and laser sensor 402 are protected by vacuum system 314 from debris (not shown) that may be generated while drilling a hole (not shown) in position 804. In this position, vacuum system 314 can clamp to frame 604. This clamp up of vacuum system 314 enables removing debris generated while forming a hole (not shown) at position 804. In this illustrative example, the clamp up allows the holes to be drilled through without the need to separate, deburr, and clean up filings. In this example, the fay surface sealant is already present prior to drilling and subsequent fastener installation.” ‘Chan’s vacuum is capable of being adapted to a cutting blade for deburring.
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hsieh with a housing that sucks chips after a cut as taught by ‘Chan in order to provide a deburr and clean up of the filings (‘Chan, Para 0132).
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 2 with the limitations of claim 1. Specifically, the prior art does not teach the combination of limitations wherein "wherein the orientation controller includes a force sensor capable of detecting a positional change of the deburrer and a control unit that controls the orientation of the deburrer according to a detection result of the force sensor.”
The closest prior art is as cited above (‘Hsieh, ‘Ichikawa and ‘Chan ).
‘Hsieh, ‘Ichikawa and ‘Chan do not teach a force sensor capable of detecting a position change of the deburrer with a control unit that orients the deburrer on the results of the force sensor. Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. Furthermore, Examiner finds no motivation found to modify the prior art to include the specific limitations of dependent claim 3, 4 & 6a. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 7 with the limitations of claim 1. Specifically, the prior art does not teach the combination of limitations wherein "wherein the orientation controller includes a spring member that is arranged between the deburrer and the mover.”
The closest prior art is as cited above (‘Hsieh, ‘Ichikawa and ‘Chan ).
‘Hsieh, ‘Ichikawa and ‘Chan do not teach an orientation controller that includes a spring that is between the deburrer and the mover.
Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. Furthermore, Examiner finds no motivation found to modify the prior art to include the specific limitations of dependent claim 8. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
U.S. 2,069,700 A. N. Emmons (‘Emmons hereafter), Filed 06/22/1934;
Teaches a portable abrading machine, sander.
U.S. 3,421,411 R. D. Lowry et al. (‘Lowry hereafter), Filed 12/30/1966;
Teaches a weld trimming apparatus where the wheels are mounted
on an axis parallel to the cutting wheel.
U.S. 5,938,503 Cook et al. (‘Cook hereafter), App 08/977791 Filed 11/25/1997;
Teaches an apparatus for sensing and correcting force levels. Does not mention burrs, debris or welds.
U.S. 2002/0166219 David et al. (‘David hereafter), App 09/851844, Filed 05/09/2001;
Teaches a method for collecting chips and debris.
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
09/11/2026
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