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 .
Response to Arguments
Applicant's arguments filed 5/5/2026 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 5/5/2026. 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.
Applicant argues against the prior art disclosing or teaching the amended subject matter directed towards “wherein the central area includes a plurality of dimples with each dimple being uniquely adjacent and aligned to the inward point of one of the curved notches”. Applicant argues that “the rejection relies on mathematical probability rather than an explicit or inherent teaching to bridge the gap to the claimed invention” and “the reasoning is flawed and relies on impermissible hindsight” (page 4, Arguments). Applicant argues that the configuration of holes (23) described by Horie does not read onto the amended claimed invention.
Regarding Applicant’s argument directed towards impermissible hindsight, the claim limitations directed towards the dimples being uniquely adjacent and aligned are/were addressed by the disclosure of Horie, i.e. Wang was not relied upon in the 103 combination/modification to teach the argued claimed subject matter. Furthermore, the configuration of the holes is described by Horie, and thus the knowledge was not gleaned from Applicant’s disclosure.
Applicant also argues that there is a 1-to-1 relationship of one dimple per one notch (see page 4, Arguments). Examiner points out that this argument is not commensurate with the claimed invention. Furthermore, in considering the recitation of “a plurality of dimples…”, the claimed invention is not closed in scope and does not exclude the existence of extra holes.
Please see the updated prior art rejection below regarding the disclosure of Horie, as well as the 112a and 112b rejections, as necessitated by amendment. For the above stated reasons, Examiner has not found Applicant’s arguments persuasive. This action is made final herein.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 29 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 29, claim 29 recites “wherein the cover includes a plurality of discrete, unconnected cutouts in a gyre pattern, wherein the gyre pattern comprises a plurality of curved notches”, emphasis added. Claim 29 recites both cutouts and notches. Firstly, the specification does not describe the structure of notch, i.e. there is no recitation of a notch within the specification. Secondly, the specification thus does not describe both notches and cutouts together. It has not been reasonably conveyed to one having ordinary skill in the art that applicant had possession of an apparatus comprising both a plurality of unconnected cutouts in a gyre pattern, wherein the gyre patter comprises a plurality of curved notches. Examiner is also unsure as to how the apparatus may comprise both, as the specification lacks written description of the claimed embodiment.
Claim 29 also recites “each dimple being uniquely adjacent and aligned…”, emphasis added. When seeking to ascertain Applicant’s intent as to how the claim is further narrowed by recitation of “unique”, Examiner was unable to find support for the newly recited subject matter. Paragraph [0029] of the specification describes the dimples having a particular diameter, and that the cover (102) includes cutouts and dimples that are arranged in a gyre, and that the number of dimples may be the same as or different from the number of cutouts. Given the specification describes some degree of patterning and uniformity, in combination with Figure 1A showing the dimples (112), the claimed subject matter contradicts what is normally understood by ‘unique’ (one of a kind, being unlike another, and so forth). Thus, the specification lacks the written description required in order to ensure that Applicant had possession of the claimed invention at the time of filing.
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.
Claim 29 is 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 29, amended claim 29 recites “wherein the cover includes a plurality of discrete, unconnected cutouts in a gyre pattern, wherein the gyre pattern comprises a plurality of curved notches” and “each dimple being uniquely adjacent and aligned”. Given the lack of written description addressed above, it is unclear what is imparted into the claimed invention by these recitations. It is unclear if Applicant intended to amend the claim to replace recitations of cutouts with notches instead (which does not have support within the specification), or what structure is being imparted by recitation of both the cutouts and notches. The cutouts are in a gyre pattern, and the gyre pattern comprises the notches, as recited by the claimed invention. What is the difference between the two structures? Examiner is interpreting the claim to impart that the cutouts and notches are the same, i.e. unconnected and curved notches in a gyre pattern, in light of what is supported by the Specification.
It is also unclear what is being imparted by recitation of each dimple being uniquely adjacent and aligned due to the lack of written description addressed above, and also because the specification describes structure which may be contrary to what is commonly understood by ‘uniquely’. Examiner has updated the prior art rejections as best understood by what is supported by the Specification in light of the amendments. Please amend the claim to reflect Applicant’s intent.
Examiner also kindly and respectfully points out that the final limitation of claim 29 recites “…aligned to the inward point of one of the curved notches”. In the amendments filed 5/5/2026, the final limitation was not indicated as amended, but the claim language was altered from “of one of the cutouts” to “of one of the curved notches”. Examiner has attempted to best encapsulate each amendment.
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 in a pattern, wherein the pattern comprises a plurality of curved notches (see notches 21; wherein the notches are separate from one another and unconnected; Col. 6, lines 19-26 disclose the notches 21 may be curved; please also refer to the 112b rejection above as it relates to the cutouts and notches),
wherein each curved notch 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 curved notches defining a central area where the curved notches 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/notch limitations 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 uniquely adjacent and aligned to the inward point of one of the curved notches (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 the curved notches; regarding the recitation of ‘uniquely’ adjacent and aligned, the holes 23 are individually provided, i.e. discrete in their adjacency and alignment with the inward points of notches 21).
Horie discloses that the shape of the notches may instead be curved (Col. 6, lines 19-26), but lacks description of the pattern of the curved notches being in a gyre pattern. Horie does not explicitly teach the curved notches are in a gyre pattern, the gyre pattern being eccentric from the center of the upper surface of the base.
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 which are curved (see Figures 3A and 3B regarding the curved grooves 301, 302), wherein the curved 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, i.e. the pattern is eccentric). 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 modifications to the apparatus, see at least the several embodiments shown in Figures 1, 3B, and 4A, in addition to the description in Col. 6, lines 15-26. Wang provides grooves which have a curvature (Col. 7, line 39-Col. 8, line 20), thus teaching overlapping features as the curved notches 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
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 MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
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, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
Prosecution Insights