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 7/01/26 have been fully considered but they are not persuasive.
Applicant asserts that the invention is enabled because applicant uses a method of satin finishing. This argument is not persuasive. Satin finishing would cause a satin finish. It wouldn’t yield concentric surfaces. Using satin finishing to arrive at concentric circles would require some additional modification to the process that isn’t set forth in the disclosure.
Applicant asserts the disclosure provides explicit direction on both the technique satin finishing and the tools diamond strips, grinding wheels, or laser. This is not persuasive. Applicant admits two paragraphs earlier – page 6 of arguments 7/1/26 – that typically machines on CNC machines using diamond grinding wheels results in machining scratches open to the outside of the surface. This is the very defect the invention is attempting to improve upon. It is absent how to use these known techniques to arrive at the claimed invention. Thus it is concluded that the invention is not enabled.
Applicant asserts the prior art shows that those skilled in the art would be familiar with grinding techniques. This argument is not persuasive. Applicant’s entire basis for an application is that the knowledge and practice known to those of ordinary skill in the art results in defects which applicant asserts they overcome, but only refers back to the same referenced techniques of the art.
Applicant asserts that the examiners reasoning is internally inconsistent. This argument is not persuasive. Applicant discusses 103 rejections. No 103 rejection is made. The previous three paragraphs summarize the issue well. Applicant claims the existing techniques are bad. Applicant claims concentric circles. Applicant doesn’t say how to achieve the concentric circles except with the previously known techniques.
Applicant asserts that claims 1-8 are product claims not method claims. This argument is not persuasive. 35 USC 112a states: (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 statutory classification being a product or method is not the core issue.
The grounds of rejection are proper and thus have been maintained.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Consult In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) See MPEP 2164.01a
Breadth of the claims: The claims are directed to concentric scratches in a watertight case, but applicant does not explain how to accomplish this.
The nature of the invention: Applicant is claiming a new manufacturing technique, but fails to actually set it forth. Applicant claims the result having concentric scratches but fails to set forth how to achieve it.
The state of the art according to applicant is figure 1 and the result of applicant’s invention is figure 2. However, the methods set forth do not address how to get from figure 1 to figure 2. The amount of direction provided by the inventor: The inventor states in claims 9 and 10 there is a satin finish. This isn’t sufficient to achieve the invention. The existence of working examples: Applicant does not provide working examples. The quantity of experimentation: Applicant doesn’t set forth examples or methodologies. Applicant merely sets forth the result in figure 2. Thus the quantity of experimentation would be expected to be high. If the process of forming the invention were common or known, then the risk of obviousness consideration is increased. Within the current context applicant presents the difference as novel and not previously occurring. The presumption that this is not routine optimization of known technique is the context of evaluation, or conversely the alternative would entail that the process is routine and known and therefore likely obvious under 35 USC 103 analysis. This would in turn necessitate substantial iterations of experimentation to arrive at the claimed invention.As noted by applicant the state of the art is flawed. “These surfaces are typically machined on CNC machines using diamond grinding wheels. These wheels machine the surface by rotating about themselves at high speed. This rotational motion leaves machining scratches all over the machined surface.” Discussion of the background of the invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 SEAN KAYES whose telephone number is (571)272-8931. The examiner can normally be reached 10-6.
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, Renee Luebke can be reached at 571-272-2009. 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.
/SEAN KAYES/Primary Patent Examiner, Art Unit 2831
Prosecution Insights