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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “fixing mechanism” in claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-11 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.
Regarding claim 1, the claim recites a shafted grinder having a shaft with a shank section and a grinder “the shank section being chucked into a hand-held rotary tool” and “when a region 30 mm from the rear end of the shaft as the shank section is fixed to a jig”. It is unclear if the rotary tool and jig are being positively recited as a part of the claimed “shafted grinder”. Applicant’s specification indicates the shafted grinder includes only the shaft and grinder fixed to the shaft, making it unclear what limitation is being imposed by the claimed attachment to the rotary tool and jig. Furthermore, it is unclear how the shank section could be chucked to the rotary tool while being fixed to the jig as recited in the claims. For the purposes of this examination, only the structure of the shaft and grinder will be read as being included as parts of the shafted grinder, and the claimed attachment to a rotary tool and jig will be read as functional limitations made possible by the shaft, as this appears to be applicant’s intent.
Further regarding claim 1, the claim recites “a natural frequency has a value that does not cause resonance during a polishing process when the following conditional expression is satisfied”, and later recites a desired range and calculation for stiffness, which includes F as “a push-in load”. It is unclear what “a natural frequency” is in this context. There is no claim language which links the claimed natural frequency and resonance to any part of the claimed structure. Is this a natural frequency of the shaft, the grinder, or some other frequency induced as a result of rotating the tool? What does it mean for a value to “not cause resonance during a polishing process”? What is “a push-in load”? For the purposes of this examination, a shafted grinder which has a stiffness within the claimed range will be read as having the properties of natural frequency and not causing resonance, as this this is examiner’s best understanding of the claim. Furthermore, the claimed formula will be read as defining a desired stiffness of the shafted grinder, where the claimed testing procedure is not limiting of the claimed structure and serves to only define a desired property of the claimed shafted grinder.
Claims 2-11 are rejected as indefinite due to their dependency upon rejected claim 1.
Regarding claim 7, the claim recites “a thickness in a direction of the axis of the grinder” in the third line. It is unclear what element a “thickness” is referring to here. Is this a thickness of the grinder, the shaft, or the shank section? For the purposes of this examination, this thickness will be interpreted as a thickness of the grinder, as this appears to be applicant’s intent.
Further regarding claim 7, the claim recites the limitation "the axis of the grinder" in the third lin. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the axis of the grinder” is the same or different from the “axis of the shaft” recited in claim 1. For the purposes of this examination, “the axis of the grinder” will be read as “the axis of the shaft” as this appears to be applicant’s intent.
Claims 8-9 are rejected as indefinite due to their dependency upon rejected claim 7.
Further regarding claim 11, the claim recites “a rotary tool”. It is unclear if this is the same or different from the “hand-held rotary tool” already recited claim 1. This is made further unclear by the fact that the hand-held rotary tool of claim 1 is ambiguously claimed (see 112b rejection of claim 1 above). For the purposes of this examination, claim 11 will be read as positively reciting the rotary tool of claim 1 as a part of the polishing tool, as this appears to be applicant’s intent.
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.
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.
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.
Claim(s) 1-3, 6, 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mari (JP 2006035414; cited by applicant; see provided machine translation) in view of Slocum (US 6280126).
Regarding claim 1, Mari teaches a shafted grinder comprising: a shaft (3) having a shank section at a rear end (top end as viewed in fig 2); and a grinder (4; fig 2) having a rotationally symmetrical shape around an axis of the shaft and fixed to a front end of the shaft (as shown in fig 2), the grinder having an outer peripheral end located on an outer peripheral side with respect to the shaft (as shown in fig 2, grinder 4 has outer peripheral surface), the shank section being chucked into a hand-held rotary tool (as described [0024]; note that the handheld rotary tool is not being interpreted as being a part of the claimed shafted grinder; see 112b rejection above for explanation of interpretation) to polish a workpiece with the outer peripheral end of the grinder ([0035]), herein the grinder includes a plurality of grinding element bundles (7A) of a plurality of inorganic filaments bundled together ([0027]) and includes a resin bonding the grinding element bundles ([0028]).
Mari is silent as to a natural frequency or stiffness of the shaft. However, it is obvious to optimize within prior art conditions through routine optimization (MPEP 2144.05 II). Slocum teaches a shafted tool comprising a shaft, describing that the stiffness of the tool is a results effective variable effected by shaft length and diameter, which may be optimized in order to reduce vibrations (col 1, lines 34-37). Slocum measures this stiffness by holding the shaft at a fixed point and applying a perpendicular push-in force at a distance from the held point (col 5, lines 54-57; note that the exact measuring conditions are not necessary to meet the claim, as the claim is directed to the structure of the shafted tool rather than a testing method; see 112b rejection above for further explanation of interpretation). As Slocum establishes that shaft stiffness is a results effective variable effecting the ability of the tool to damp vibrations which occur during use, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to adjust the diameter and length of the shaft of Mari to arrive at a stiffness within the claimed range, achieving the predictable result of optimizing vibration damping within the tool as taught by Slocum.
Regarding claim 2, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari is silent as to a length of the dimension of the rear end of the shaft to the grinder. However, Slocum further teaches a length dimension of the shaft is a results effective variable which directly effects the stiffness of the tool (col 1, lines 34-37). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at a usable length of 50mm or more for the shaft of Mari through routine optimization, resulting in a tool with the desired stiffness and vibration damping as taught by Slocum.
Regarding claim 3, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari further teaches the shaft has an outer diameter of less than 6 mm ([0026]).
Regarding claim 6, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari further teaches the grinder is square or circular when viewed from a direction orthogonal to the axis (as shown in figs 5a and 5c).
Regarding claim 10, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari is silent as to a length of the dimension of the rear end of the shaft to the grinder. However, Slocum further teaches a length dimension of the shaft is a results effective variable which directly effects the stiffness of the tool (col 1, lines 34-37). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at a usable length of 150mm or more for the shaft of Mari through routine optimization, resulting in a tool with the desired stiffness and vibration damping as taught by Slocum.
Regarding claim 11, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari further teaches a polishing tool comprising a rotary tool (as described [0024]) into which the shank section of the shafted grinder is chucked (as shown in fig 2).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mari and Slocum as applied to claim 1 above, and further in view of Esenwein (DE 102013211997, see provided machine translation).
Regarding claim 4, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari is silent as to a weight of the grinder. However, it has been held that changes in size and proportion are obvious modifications for a person of ordinary skill (MPEP IV. A.) and it is obvious to optimize within prior art conditions through routine optimization (MPEP 2144.05 II). Esenwein teaches a shafted grinder, wherein the size and weight of the grinder are results effective variables which may be optimized in order to prevent runout and vibrations during use of the tool ([0037-0038]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the grinder of Mari to weight 0.8g or less, as the weight of the grinder is known as a results effective variable which can be optimized to reduce runout and vibrations as taught by Esenwein ([0037-0038]).
Claim(s) 5 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mari and Slocum as applied to claim 1 above, and further in view of Lewis (US 10183372).
Regarding claim 5, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari does not teach a fixing mechanism (interpreted under 112f as including a screw passing through the grinder and into a threaded hole in the shaft and functional equivalents) configured to removably fix the grinder to the front end of the shaft. Lewis teaches a shafted grinder including a fixing mechanism (including screw 84 passing through hole 83 in grinder and into threaded hole 88 in shaft) configured to removably fix the grinder to the front end of the shaft (fig 9; col 10, lines 48-57). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a fixing mechanism to removably fix the grinder of Mari to the front end of the shaft, as this achieves the predictable result of allowing replacement of the grinder as taught by Lewis (col 12, lines 42-44).
Regarding claim 7, Mari, as modified, teaches all the limitations of claim 1 as described above. Mari further teaches the grinder has an outer diameter dimension (as shown in the embodiments of figs 2 and 5a-c), and an outer diameter of the shank section is smaller than the outer dimension of the grinder (as shown in the embodiments of figs 2 and 5a-c). Mari does not explicitly teach the outer dimension of the grinder is 3mm or more. However, it has been held that changes in size and proportion are obvious modifications for a person of ordinary skill (MPEP IV. A.). Applicant has provided no showing of criticality to the claimed range. Furthermore, Lewis teaches a shafted grinder wherein the grinder has an outer dimension of 3mm or more (col 7, lines 21-24). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the outer diameter dimension of Mari to be 3mm or more, as the size of the grinder is may be easily selected based on the size of the desired workpiece without a change in function of the device and grinders of this size are known in the art based on the teachings of Lewis.
Mari does not explicitly teach a thickness of the grinder in a direction of the axis of the shaft (see 112b rejections above for explanation of interpretation) being smaller than the outer diameter dimension of the grinder. However, it has been held that changes in shape are obvious changes for a person of ordinary skill (MPEP 2144.04 IV. B.). Additionally, Lewis teaches a shafted grinder wherein a thickness of the grinder in a direction of the axis of the shaft is smaller than an outer diameter dimension of the grinder (as can be seen in each of the embodiments of figs 6A-6G). As grinding discs are ubiquitous in the prior art and many alternative grinder shapes wherein the thickness of the grinder is smaller than an outer diameter of the grinder are known grinder shape alternatives in the art of shafted grinders, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the grinder shapes of Lewis in place of the grinder shape of Mari, as these shapes are known grinder shape alternatives based on the teachings of Lewis and can be easily selected based on the desired workpiece and grinding being done.
Regarding claims 8 and 9, Mari, as modified by Lewis, teaches all the limitations of claim 1 as described above. Lewis further teaches (each of the grinder shapes in figs 6A-6G of Lewis are obvious alternatives to the shape taught by Mari as detailed in the rejection of claim 7 above) the grinder has a shape that tapers toward an outer peripheral side when viewed from a direction orthogonal to the axis (as shown in fig 6F of Lewis); and wherein the grinder is rectangular when viewed from a direction orthogonal to the axis (as shown in fig 6D of Lewis).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Other similar grinders are cited, including those with special attention paid to tuning stiffness.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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