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 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 1-8 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.
Claim 1 recites “opening portions of a plurality of opening portions” where it is unclear if these structures are the same or if there is a difference/distinction between the opening portions and the plurality of opening portions. Opening portions is plural (portions), therefore requiring a plurality (more than one). Perhaps the opening portions are a subset of the opening portions of the plurality of opening portions. Alternatively, they are the same in which case “a plurality of opening portions” should be deleted.
Claim 2 requires the plurality of opening portions include first opening portions that are formed on the first surface; however, claim 1 already recites opening portions at ends of the through-holes which are open to the first surface, where these opening portions are polygonal. Claim 2 appears to be referring to the same structure but calling by a different name which is improper.
Claim 4 requires the first and the second polishing region be positioned on the first surface (Refer to lines 2-3) while also requiring the second polishing region be on the second surface (Refer to line 8). Claim 4 also requires the third and fourth polishing regions be on the second surface (Refer to lines 3-4) while also requiring the third polishing region be on the first surface (Refer to lines 10-11). These requirements contradict one another and as a result, render the claim indefinite. The claim will be interpreted as requiring the first and third polishing regions be on the first surface and have a hexagonal shape, while the second and fourth polishing regions are on the second surface and have a circular shape.
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scharf et al. (US 10820755).
Regarding claim 1, Scharf et al. discloses a file (Refer to Figures 10-12, 23 and 31) capable of being used on nails, the file comprising: a plate-shaped base material (204; 12; 12a); and a plurality of through-holes (202,207 or 201,202,206,207; 26a without cross hatching immediately adjacent 26a or all of 26a) that are formed on the base material, wherein each through hole has opening portions (non-cross-hatched areas around holes form boundary defining opening portions having polygonal shape) of a plurality of opening portions at both ends thereof, wherein the edges of the base material defining the opening portions at both ends of each through-hole comprise file-teeth (the edges of the open portions form file teeth), wherein a shape of each of the opening portions that are open to a first surface (213, top surface of 12,12a) of the base material is a polygon (In general Scarf et al. teach the polygon can a variety of shapes such as rectangles, squares, and other polygons, Refer to paragraph 0005. With regard to Figures 10-12, the polygon is depicted as 4 sided polygon and described as having “any shape” but preferably being “rectangular or trapezoidal” per paragraph 0062. With regard to Figures 23 and 31, the polygonal shape appears square.), a shape of each of the opening portions that are open to a second surface (215; lower surface of 12,12a opposite 18a) of the base material is a circle and an area of each of the opening portions that are open to the first surface is larger than an area of each of the opening portions that are open to the second surface (first opening surface is defined by the polygonal areas on the top surface which are larger in size than the circle of the through hole on the second surface).
Regarding claim 2, Scharf et al. disclose wherein the base material has a first polishing region (one or more circular rows of the embodiment of Figures 10-12, one or more rows of the embodiments of Figures 23 and 31) in which the first opening portions of the plurality of opening portions are formed, on the first surface, wherein the polygon as the shape of each of the first opening portions is one type selected from a quadrangle, and the first opening portions are arranged to planarly fill the first polishing region.
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 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Scharf et al.
Regarding claim 3, Scharf et al. disclose the file of claim 2 above; however, Scharf et al. does not explicitly state the polygon as the shape of each of the first opening portions is a regular hexagon and the first opening portions are arranged in a honeycomb shape in the polishing region (Refer to the rejection of claim 1 above and Figure 3a of Holko et al.). Scarf et al. explain that the polygon may have a “a variety of different configurations and shape” or “any shape” and provides “rectangular or trapezoidal”, square and “other polygonal shapes” as examples (Refer to paragraphs 0005 and 0062). Scarf et al. also depict the polygons as having touching/shared edges and being in offset rows (Refer to Figures 10 and 11), whereby if the shape were hexagonal, the pattern would result in a honeycomb shape. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the file of Scharf et al. to modify the shape of the opening portions of Scarf et al. to be hexagonal as Scarf et al. state the polygon can have any shape and since such a modification would have involved a mere change in the size/shape of a component. A change in size/shape is generally recognized as being within the level of ordinary skill in the art. Changing the shape to a hexagon, results in a honeycomb pattern as the circular rows are offset from one another.
Regarding claim 4, Scarf et al. disclose the file of claim 3 above, where the base material has the first, a second, a third and a fourth polishing region (first=portion of first surface including one or more outer rows of holes, third=other portion of first surface defined including one or more inner rows of holes, second=portion of second surface including one or more outer rows of holes, and fourth=other portion of second surface including one or more inner rows of holes), wherein the first opening portions (opening portions of the one or more outer rows defined by the ends of the hexagonal shapes on a portion of the first surface) of the plurality of opening portions having a regular hexagon shape are formed in the first polishing region on the first surface, second opening portions (opening portions of the one or more outer rows defined by the ends of the circular holes of the portion of the second surface) of the plurality of opening portions having a circle shape are formed in the second polishing region on the second surface, third opening portions (opening portions of the one or more inner rows defined by the ends of the hexagonal facets on the other portion of the first surface) of the plurality of opening portions having a regular hexagon shape and having a smaller size than the first opening portions (opening portions decrease in size from the outer rows toward the inner rows) are formed in the third polishing region on the first surface and fourth opening portions (opening portions of the one or more inner rows defined by the ends of the circular holes of the other portion of the second surface) of the plurality of opening portions having a circle shape and having a smaller size than the second opening portions (opening portions decrease in size from the outer rows toward the inner rows) are formed in the second polishing region on the second surface.
Regarding claims 5-8, Scarf et al. disclose the file of claims 1-4 above, wherein the file is made of metal such as stainless steel (Refer to paragraphs 0048 and 0057); however, Scarf et al. does not specify the stainless steel being 18-8 stainless steel. It is well-known and conventional in the art to construct such files of 18-8 stainless steel. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the metal/stainless steel file of Scarf et al. of 18-8 stainless steel as it is well-known and conventional to make such files of 18-8 stainless steel and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 100846444 B1) and Holko et al (US 20100152738).
Regarding claim 1, Kim discloses a nail file (Refer to Figures 6-7b) comprising: a plate-shaped base material (1); and a plurality of through-holes (7) that are formed on the base material (1), wherein each through hole has opening portions of a plurality of opening portions at both ends thereof (6, edges at ends of through-holes), wherein the edges of the base material defining the opening portions at both ends of each through-hole comprise file-teeth, a shape of each of the opening portions that are open to a second surface (surface of 7 below 1) of the base material (1) is a circle; however, Kim does not disclose a shape of each of the opening portions that are open to a first surface of the base material is a polygon such that an area of each of the opening portions that are open to the first surface is made larger than an area of each of the opening portions that are open to the other surface.
Holko et al. disclose an abrading device (Refer to Figures 1-5) having a base material with a plurality of circular holes (21). Each hole (21) is surrounded by a cutting facet (23) having a polygonal shape (hexagonal) where the edges act as cutting edges or shearing ridges (Refer to Figures 1c and 3a and paragraph 0025). Holko et al. explains that the protrusions are hexagonal but can have other shapes such as conical, pyramidal, etc. (Refer to paragraph 0027). The hexagonal configuration, best shown in Figure 3a, is arranged in a honeycomb shape. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the file of Kim such that the first surface be provided with opening portions at the end of the through holes of hexagonal shape, thereby forming a honeycomb pattern on the first surface as taught by Holko et al. in order to provide various individual abrading/cutting edges and corners, formed by the hexagonal honeycomb pattern, ensuring improved abrading with durability and mechanical strength.
Regarding claim 2, the combination of Kim and Holko et al. disclose the nail file of claim 1 above, where the base material has a first polishing region (portion or all of the first surface defined by the hexagonal facets) in which the first opening portions (opening portions at end of first surface defined by the facets and forming the cutting edges) of the plurality of opening portions are formed, on the first surface, wherein the polygon as the shape of each of the first opening portions is one type selected from a triangle, a quadrangle, and a hexagon (As explained in the rejection of claim 1 above, the shape of the opening portions on the one surface is a hexagon.), and the first opening portions are arranged to planarly fill the first polishing region (Refer to Figure 6 of Kim).
Regarding claim 3, the combination of Kim and Holko et al. disclose the nail file of claim 2 above, wherein the polygon as the shape of each of the first opening portions is a regular hexagon (As explained in the rejection of claim 1 above, the shape of the opening portions at the end on the first surface is a regular hexagon. Refer to Figure 3a of Holko et al.), and the first opening portions are arranged in a honeycomb shape in the polishing region (Refer to the rejection of claim 1 above and Figure 3a of Holko et al.).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim and Holko et al. as applied to claim 3 above, and further in view of Gordon et al. (US 20140100589).
Regarding claim 4, the combination of Kim and Holko et al. disclose the nail file of claim 3 above, where the base material has the first, a second, a third and a fourth polishing region (first=portion of first surface defined by hexagonal ends of holes, third=other portion of first surface defined by hexagonal ends of holes, second=portion of second surface defined by circular ends of holes, and fourth=other portion of second surface defined by circular ends of holes), wherein the first opening portions (opening portions defined by the ends of the hexagonal facets on a portion of the first surface) of the plurality of opening portions having a regular hexagon shape are formed in the first polishing region on the first surface, second opening portions (opening portions defined by the ends of the circular holes of the portion of the second surface) of the plurality of opening portions having a circle shape are formed in the second polishing region on the second surface, third opening portions (opening portions defined by the ends of the hexagonal facets on the other portion of the first surface) of the plurality of opening portions having a regular hexagon shape are formed in the third polishing region on the first surface and fourth opening portions (opening portions defined by the ends of the circular holes of the other portion of the second surface) of the plurality of opening portions having a circle shape are formed in the second polishing region on the second surface; however, the combination of Kim and Holko et al. do not disclose the third opening portions having a smaller size then the first opening portions and the fourth opening portions having a smaller size than the second opening portions.
It is well-known and conventional in the art for abrading devices to have discrete sections with different abrasive properties, where the size of the opening portions dictates the degree of abrasiveness/roughness (coarseness or fineness). Gordon et al. discloses an exfoliating/abrading device having a plurality of holes defining opening portions, where the size and spacing of the opening portions varies in discrete regions of the device to provide smoother and coarser regions (Refer to Abstract, paragraphs 0007 and 0030, and Figures 1, 6, 7 and 10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nail file of the combination of Kim and Holko et al. such that each surface (the one surface and the other surface) have two polishing regions defined by opening portions of different size, as Gordon et al. demonstrate it is well-known and conventional to form various discrete regions with different abrasive properties dictated by the different diameters of the opening portions in each region, as this allows the device to provide different coarseness and fineness levels of abrasion which the user may pick from or use sequentially as desired during use.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim and Holko et al. as applied to claims 1-3 above, and further in view of Nakamura (JP5743709).
Regarding claims 5-7, the combination of Kim and Holko et al. disclose the nail file of claim 1-3 above. Kim teaches the base material is formed of metal but is silent regarding the specific type of metal; however, it is well-known and conventional in the art to construct such files of stainless steel, such as 18-8 stainless steel as demonstrated by Nakamura (Refer to page 3 “18Cr-8NL stainless steel plate”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the metal nail file of the combination of Kim and Holko et al. of 18-8 stainless steel as Nakamura demonstrates it is well-known and conventional to make such files of 18-8 stainless steel and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim, Holko et al. and Gordon et al. as applied to claim 4 above, and further in view of Nakamura (JP5743709).
Regarding claims 8, the combination of Kim, Holko et al. and Gordon et al. disclose the nail file of claim 4 above. Kim teaches the base material is formed of metal but is silent regarding the specific type of metal; however, it is well-known and conventional in the art to construct such files of stainless steel, such as 18-8 stainless steel as demonstrated by Nakamura (Refer to page 3 “18Cr-8NL stainless steel plate”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the metal nail file of the combination of Kim, Holko et al. and Gordon et al. of 18-8 stainless steel as Nakamura demonstrates it is well-known and conventional to make such files of 18-8 stainless steel and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Response to Arguments
Applicant’s arguments with respect to the rejection of claim 1 under the combination of Kim and McDermott have been considered but are moot because the arguments are with respect to McDermott and the new ground of rejection does not rely on McDermott for any teaching or matter specifically challenged in the argument.
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 TATIANA L NOBREGA whose telephone number is (571)270-7228. The examiner can normally be reached M-F 8am-4pm.
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/TATIANA L NOBREGA/Primary Examiner, Art Unit 3799
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