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 .
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s).
“a spiral groove” of claims 5 and 12.
“vent passages” of claims 6 and 13.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 12’, 32, 34. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3 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.
Claims 3 and 10 recites “made from one of [A] and [B].” However, the use of the word “and” rather than “or” renders the claims indefinite. The court determined in Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004) that the language “at least one of [A] and [B]” should be interpreted as a conjunctive list, therefor requiring at least one of A and at least one of B. However, the instant claim recites substitutable elements, rather than categories, as in the Superguide Corp. v. DirecTV Enterprises, Inc case. Additionally, the conjunctive interpretation appears to be inconsistent with the invention as described in the Applicant’s specification (specifically paragraph 0024 where the metal mesh can be made from one of the listed elements, not all of the listed elements).
Accordingly, the claims will be interpreted in the disjunctive case, requiring only one element in the list to be present. The Applicant is encouraged to amend the claims with the language “at least one of [A] or [B]” or clarify on the record that the conjunctive interpretation was intended.
Claim Rejections - 35 USC § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 8, 10, 11, 15, and 16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Hoerr (US 2023/0208257).
Regarding claim 1, Hoerr discloses a grounding element (10 of Figure 1-2), comprising:
an annular electrically conductive material (23 of Figure 1) formed with a hole in a center (see Figure 1, (13) is located in the hole of (23)); and
an annular electrically conductive metal mesh (15 of Figure 1-2; Para. 0014, 0032-0035) formed with a hole in a center (see Figure 1, (26) is located in the hole of (15)) and embedded within the annular electrically conductive material (see Figure 1).
Regarding claim 8, Hoerr discloses a grounding element assembly for grounding electric current from a rotating shaft to a bore of a housing, comprising:
a grounding element (10 of Figure 1-2), comprising:
an annular electrically conductive material (23 of Figure 1) formed with a hole in a center (see Figure 1, (13) is located in the hole of (23)); and
an annular electrically conductive metal mesh (15 of Figure 1-2; Para. 0014, 0032-0035) formed with a hole in a center (see Figure 1, (26) is located in the hole of (15)) and embedded within the annular electrically conductive material (see Figure 1); and
an annular conductive metal case (13 of Figures 1-2) attached to an outer perimeter of the grounding element.
Regarding claim 2, Hoerr discloses wherein the annular conductive material (23 of Figure 1) is made from PTFE or other material (inherent the annular conductive material is made from a material).
Regarding claims 3, 10, Hoerr discloses wherein the annular electrically conductive metal mesh (15 of Figure 1-2; Para. 0014, 0032-0035) is made from one of copper, aluminum, steel, stainless steel and silver (Para. 0014).
Regarding claims 4, 11, Hoerr discloses wherein the grounding element (10 of Figure 1-2) is generally cone shaped (see Figure 2).
Regarding claim 15, Hoerr discloses wherein the annular conductive metal case (13 of Figures 1-2) is adhered to the grounding element (Para. 0018).
Regarding claim 16, Hoerr discloses wherein the annular conductive metal case (13 of Figures 1-2) includes a pair of metal case members (17 of Figure 1-2) that clamp the grounding element therebetween (Para. 0033).
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.
Claims 5-6 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hoerr (US 2023/0208257), in view of Brushkivskyy (US 2021/0391680).
Regarding claims 5, 6, 12, 13, Hoerr discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein the grounding element (10 of Figure 1-2) includes a shaft engaging surface (26 of Figure 1) including a spiral groove (claims 5, 12);
wherein the shaft engaging surface includes vent passages extending through the spiral groove (claims 6, 13).
Brushkivskyy discloses wherein the grounding element includes a shaft engaging surface including a spiral groove (Para. 0015-0018) (claims 5, 12);
wherein the shaft engaging surface includes vent passages (the space within the groove is the vent passage) extending through the spiral groove (Para. 0015-0018) (claims 6, 13).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have the shaft of Hoerr to include a spiral groove, as taught by Brushkivskyy, to provide grooves extending helically relative to the rotational axis can be formed in the (end) face of the solid conductor that faces toward the second element. For example, the solid conductor can have a threaded section for this purpose [Brushkivskyy: Para. 0015].
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hoerr (US 2023/0208257), in view of Schamin (US 2023/0015934).
Regarding claims 7, 14, Hoerr discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein the annular electrically conductive metal mesh (15 of Figure 1-2; Para. 0014, 0032-0035) includes steel wool intertwined with the metal mesh.
Schamin discloses wherein the annular electrically conductive metal mesh includes steel wool intertwined with the metal mesh (Para. 0026).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have the electrically conductive metal mesh of Hoerr include steel wool intertwined with the metal mesh, as taught by Schamin, to benefit from steel wool’s large surface area and conductivity to create an effective connection with the grounding system.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hoerr (US 2023/0208257), in view of Teller (EP 3,972,097 A1).
Regarding claim 9, Hoerr discloses all of the elements of the current invention as mentioned above, however does not explicitly wherein the annular conductive material (23 of Figure 1) is made from PTFE.
Teller discloses wherein the annular conductive material is made from PTFE (Page 2, Para. 0001).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have the conductive material of Hoerr made from PTFE, as taught by Teller, since it is known in the art that using PTFE as the conductive material provides safe static dissipation for static electricity to safely discharge to a ground point which prevents sparks in flammable environments.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McGhee (US 2019/0133003) discloses conductive metals made from silver, copper, and aluminum.
Richardson (US 2016/0057873) discloses an electrically conductive metal mesh.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES H REID whose telephone number is (571)272-9248. The examiner can normally be reached M-F 9:30-4:45 PM.
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, Tulsidas Patel can be reached at 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Charles Reid Jr./ Primary Examiner, Art Unit 2834