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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/23/2026 has been entered.
Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not disclose or teach the claimed invention as submitted in the amendments filed 1/23/2026. While the claimed invention stands as amended, and the prior art rejection has been updated below, Examiner has not found Applicant’s arguments persuasive. Please see the updated grounds of rejection below.
Furthermore, Applicant argues that “Horie teaches a plurality of grinding sheets attached all over the upper surface of a wheel, as shown in Horie’s Figure 2B”. Examiner kindly points out that the embodiment referenced in the previous (and updated) rejection is that of Figure 4A and 4B of Horie. Figure 4B is a sectional view of the grinding sheet of Figure 4A attached thereon (Col. 6, lines 27-34).
For the above stated reasons, Examiner has not found Applicant’s arguments persuasive.
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 (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.
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 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.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horie (US 4,555,250) in view of Wang (US 8,398,461).
Regarding claim 29, Horie (US 4,555,250) discloses a polishing button for use in an ophthalmic lens polishing apparatus (Col. 1, lines 12-21), the button comprising:
a substantially stiff and substantially non-absorptive base (see Figure 4A, abrasive dish wheel 10; wherein Col. 1, lines 48-50 disclose the material of the dish wheel as cast iron, i.e. substantially stiff; wherein Figures 4A and 4B show the disk wheel comprises a solid body, i.e. the combination of material and description of the abrasive wheel provides a non-absorptive cast iron dish); and
a substantially flexible cover that is attached to an upper surface of the base (see grinding sheet 9; see also Col. 6, lines 32-34 and 42-46; wherein Col. 6, lines 15-26 disclose the sheet 9 is produced such that the sheet can adhere closely to the abrasive dish wheel; see also Col. 3, lines 20-21 regarding flexibility and abrasive properties; Col. 4, lines 31-35 also disclose flexibility; Col. 5, lines 1-10 disclose conformability and 25-31 disclose imparting good flexibility);
wherein the cover includes a plurality of discrete, unconnected cutouts (see notches 21; wherein the notches are separate from one another and unconnected),
wherein each cutout extends a different length from the periphery of the cover to an inward point toward the center of the upper surface of the base, the inward points of the cutouts defining a central area where the cutouts do not extend (best shown in Figure 4A, wherein the notches 21 extend from the peripheral portion of the sheet 9 to their end points in a direction toward the center of the upper surface of the dish wheel 10; see also Col. 6, lines 11-14 and 19-26; wherein there are plural notches 21 which differ in length from one another, as can be seen in Figure 4A; wherein the central area where the notches 21 do not extend defines a central area; wherein Examiner further addresses the cutout limitation in the combination statement below), the central area being eccentric from the center of the upper surface of the base (wherein the area defined by the inward ends of notches 21 is eccentric from the center of the dish wheel element 10, see Figure 4; please also refer to the combination statement as provided below),
wherein the central area includes a plurality of dimples with each dimple being adjacent and aligned to the inward point of one of the cutouts (wherein there are holes 23 within the central area of the sheet 9; wherein Col. 8, lines 28-32 disclose a degree of pattern for the holes, i.e. wherein the diameter of the holes was 2.5 mm, and the distance between two adjacent holes was about 6 mm; wherein Col. 6, lines 15-19 disclose that the total area of the small holes 23 is about 10 to 40% based on the total area of the sheet, excluding the area of the notches 21; thus, given that there are holes 23 within the central area without notches 21 extending therein, in combination with the hole diameters, distances between holes, and area of occupancy of holes, there are holes aligned with and adjacent to the terminal end points of notches 21; see also below for the specific pattern of notches).
However, Horie does not explicitly teach the notches are in a gyre pattern, the gyre pattern being eccentric from the center of the upper surface of the base.
Horie intimates and suggests alternatives to the shape of the notches, indicating that the shape of the notches may instead be curved (Col. 6, lines 19-26). From the same or similar field of endeavor of devices configured to polish and modify the surface of a workpiece, Wang teaches of an annular polishing element comprising a plurality of discrete, unconnected cutouts (see Figures 3A and 3B regarding the grooves 301, 302), wherein the cutouts are in a gyre pattern (please see Figures 3A and 3B, as well as Col. 7, line 39-Col. 8, line 20), and wherein the gyre pattern is eccentric (wherein Col. 11, lines 20-35 specifically address that the rotational center need not overlap with the center of the surface pattern). Examiner also notes herein that the lack of overlap with the rotational center would additionally impart different lengths to the respective grooves, and Horie also provides notches of different lengths. Furthermore, given that Wang provides that the pattern and rotational center do not need to overlap, and that Horie has a rotational center which is the center of the annular shape shown in Figures 4A and 4B, the incorporated pattern is eccentric from the rotational center; the i.e. the combination of Horie in view if Wang teaches the claimed invention.
Wang specifically intimates and suggests that the polishing invention can be applied to polishing processes for devices in the optics industry (see Col. 10, line 60-Col. 11, line 3). Horie also intimates and suggests alternatives to the shape of the notches, indicating that the shape of the notches may instead be curved (Col. 6, lines 19-26). Wang provides grooves which have a curvature (Col. 7, line 39-Col. 8, line 20), thus providing an answer to the suggestion of Horie, and Wang also suggests incorporating features of the invention into devices within the optics field, i.e. the invention of Horie. 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 spiral curved pattern which does not overlap with the rotational center of the polishing device, as taught by Wang, into the invention of Horie. Both Wang and Horie suggest modifications and intimate combinations related to one another, and both inventions are directed towards devices configured to polish workpieces, wherein each device has a type of pattern for acting on the surface of the workpiece. One would be motivated to combine in the teachings of Wang in order to obtain the curved configuration of notches suggested by Horie.
Conclusion
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723