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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Acknowledgement is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1149 filed 09/10/2024. This IDS has been considered.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 08/21/2026 is acknowledged. The traversal is on the ground(s) that the Examiner did not satisfactorily meet the burden required to establish dissect process and product made and search burden. This is not found persuasive because first, Examiner respectfully disagrees that additive manufacturing and the claimed punching and heat treating processes are not materially different. The are classified completely differently and one would never cite an additive manufacturing reference as prior art for the claimed method steps. Furthermore, claim 10 provides extremely detailed materials, manufacturing, inspection and packaging steps that are so different from the structural details of claim 1 that claim 10 would belong in a different Examination unit altogether. This leads to the second point where Applicant argues a search burden was not properly established. Examiner pointed out how the two groups should be classified differently due to the detailed metal-working steps of claim 10 as opposed to the structural elements of claims 1-9. That different search strings are required for each claim is self-evident due to the extensive metal-working language of claim 10. That claim 10 is limited to the production of a particular balance weight is irrelevant since only one-way distinction is required for a process-product made restriction. No further explanation is required and the Examiner met the burden established by MPEP §808.
Since claim 10 is a dependent claim, Applicant is assured that upon allowance of claim 1, claim 10 will be rejoined as appropriate.
The requirement is still deemed proper and is therefore made FINAL.
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 6-9 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 6, the terms “large arc surface” and “small arc surface” represent relative terminology and are unclear. The specification does not define what constitutes “large arc” and what constitutes “small arc”, especially because figure 1, which is the only figure that shows the large arc and small arc reference numerals, appears to depict the arcs as the same or substantially the same size. See MPEP §2173.05(b).
For the purposes of applying prior art, Examiner is comparing the prior art with figure 1 and interpreting the large arc and small arc as substantially similar in size.
Claims 7-9 inherit the deficiencies of claim 6 and are likewise rejected.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (WO 03/068534; “Lee”) in view of Sha (CN205255885; see attached machine translation) and Wang et al. (CN201053471; “Wang”, see attached machine translation).
Regarding claim 1, Lee discloses an iron hooked balance weight (page 1, lines 5-10, page 9, lines 3-6), comprising a balance weight body (10) and a hook (20), wherein the balance weight body is made of an iron material (page 9, lines 3-6), a hook positioning cavity (18, see figure 8b) is machined in a center of a back surface of the balance weight body (10) (page 18, lines 14-17), and two first riveting holes (17) are machined in the hook positioning cavity (18) (page 17, lines 10-16), the hook (20) comprises a riveting part (22’) adapted to the hook positioning cavity (18) (see figure 8b, page 18, lines 14-17) and a hook body part (21) bent in a cambered shape forward and downward (see figures 8a-8c), two second riveting holes (25) are formed in the riveting part (22’) (page 17, lines 10-16, see figures 7a-7c), and the hook (20) and the balance weight body (10) are riveted into a whole through a riveting member (30) (page 17, lines 10-16, see figures 7a-7c).
The embodiments of figures 7 and 8 show the hook body pointing away from the weight body rather than forming a hooking cavity with it.
However, the embodiment for figures 5a-5c show an embodiment where the hook is reverse such that the hook body part (21) fits with a top surface of the balance weight body (10) to form a hooking cavity and a hooking introduction port of the hooking cavity is formed between a front end of the hook body part (21) and a front end surface of the balance weight body (10) (page 15, lines 11-18).
Lee further discloses that the embodiments can be modified within the scope of other embodiments (page 19, lines 4-12), this modifying the embodiments of figures 7 and 8 such that the hook bends over the front side of the weight body is well within the purview of one having ordinary skill in the art. It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to modify the embodiments of figures 7 and 8 such that the hook is reverse as shown in figure 5 for the purpose of protecting the weight body by holding the weight body under the hook that is connected to the tire.
Lee is silent to a cambered window with an anti-dropping barb.
In the same field of endeavor, Sha teaches a hook-type tire balance weight (¶ [0002]) wherein the hook body part (122) is provided with a cambered window (1221), wherein the cambered window facilitates disassemble (¶ [0025), and an anti-dropping barb (1222) is arranged in the cambered window (1221) such that the hooking cavity has an anti-dropping function (¶¶ [0015], [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to engineer Lee’s hook to have Sha’s cambered window and barb for the purpose of allowing the hook to better grip the tire while enabling easy disassembly of the balance when desired (¶¶ [0015], [0025]).
Both Lee and Sha disclose the balance body is made of iron material. Sha discloses the hook is elastic (¶ [0008]) but does not specifically disclose the material is an iron material.
In the same field of endeavor, Wang also teaches a hook and body tire balance that also described the hook as a spring, the spring made of an iron material (¶ [0015]).
Furthermore it has been held that the selection of a known material based on its suitability for its intended use is within the purview of one having ordinary skill in the art. See MPEP §2144.07.
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to make Lee’s hook out of steel as taught by Wang for the purpose of having the hook and body made of the same material in order to prevent differences in thermal expansion that may weaken the structure and connection of the pieces.
Regarding claim 2, Lee, Sha and Wang disclose all the limitations of claim 1 on which this claim depends.
Lee discloses a depth of the hook positioning cavity (18) is greater than a thickness of the hook (21) (see figure 4a, riveting part is sunken in to below a surface depth of the surrounding block body 10).
Regarding claim 3, Lee, Sha and Wang disclose all the limitations of claim 2 on which this claim depends.
Sha teaches in the figure 1 lead angle inclined surfaces are machined on two sides of the front end of the hook body part (122) and facilitate introduction during hooking (see figure 1).
The reasons and motivation for combining are the same as recited in the rejection of claim 1 above.
Regarding claim 4, Lee, Sha and Wang disclose all the limitations of claim 3 on which this claim depends.
Lee further discloses the balance weight body (10) is in a shape of a cambered segment, and a curvature of the cambered segment is adapted to a curvature of an automobile hub (page 8, lines 12-14).
Regarding claim 5, Lee, Sha and Wang disclose all the limitations of claim 4 on which this claim depends.
Sha and Wang both further teach an element symbol representing a material of the balance weight body is provided on the back surface of the balance weight body, and a digital symbol representing a number of counterweights of the balance weight body is provided on the back surface of the balance weight body (Sha, ¶ [0027], Wang, figure 2).
Sha and Wang are both silent to the element symbol located on a left side of the hook position cavity and the digital symbol and located on a right side of the hook positioning cavity.
However, given the size and small number of locations on the balance body for letters and numbers, one having ordinary skill in the art could arrive at the claimed locations for the letters and number without the use of inventive skill with a reasonable expectation of success. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to locate Sha and Wang’s numbers and letters at the claimed locations for the purpose of the symbols are easily viewable without comprising the strength and structural integrity of the hook positioning cavity.
Regarding claim 6, Lee, Sha and Wang disclose all the limitations of claim 5 on which this claim depends.
Lee further teaches in figures 8a and 8b a large arc surface is connected between the top surface and the front end surface of the balance weight body (10), and a small arc surface is connected between a bottom surface and the front end surface of the balance weight body (10) (see figures 8a and 8b, balance weight body corners are arced).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lee, Sha, and Wang as applied to claim 6 above, and further in view of Lu (CN106739773; see attached machine translation).
Regarding claim 7, Lee, Sha, and Wang disclose all the limitations of claim 6 on which this claim depends.
Sha and Wang both teach providing symbols on the balance weight to help users discern information concerning the balance weight but are silent to marking a product series.
In the same field of endeavor, Lu teaches a hooked balance weight (¶ [0007]) which is provided with product information (4) (¶ [0015]).
Lu discloses specifically trademark information, but this suggests to one having ordinary skill in the art that other company-specific branding can also be provided on the weight including product series in the English language if applicable. Given that Lu teaches providing company product information, and given the finite number of options for representing a product, one having ordinary skill in the art could conceive of English language product series as an identification marker on Lee’s balance. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007).
Similarly, even though Lu teaches putting the identification on the weight body, given the size and small number of different locations on the balance in general for letters and numbers, one having ordinary skill in the art could arrive at the claimed location of the rivet part for product series without the use of inventive skill with a reasonable expectation of success. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to move the identifying production information such as product series to the rivet part for the purpose of making it easier for the user to see and thus identify.
Regarding claim 8, Lee, Sha, Wang and Lu disclose all the limitations of claim 7 on which this claim depends.
Sha, Wang, and Lu all disclose putting letters and digital symbols on the balance weight but do not specify whether the letters are convex or concave.
However, given the small finite number of ways to place indicia on a balance weight, one having ordinary skill in the art would readily appreciate and infer that processes resulting in the indicia being convex (such as using a mold including the indica for the pieces) are within the purview of a skilled artisan.
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to engineer Lee’s balance weight as modified by Sha, Wang, and Lu for the purpose of allowing the weights to be identified tactilely rather than just visually for the benefit of making sorting and identifying easier.
Regarding claim 9, Lee, Sha, Wang and Lu disclose all the limitations of claim 8 on which this claim depends.
Lee further discloses the top surface and the bottom surface of the balance weight body (10) are inclined surfaces (page 8, lines 12-14).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2000035087 to Uchimoto discloses a hooked balance where the hook and balance body are connected by rivets.
CN 207388745 to Nicholas discloses a hooked balance where the hook comprises a cambered window with a barb.
KR 20070042241 to Ku discloses a hooked balance where the hook and balance body are connected by rivets.
CN 217863577 to Hu discloses a hooked balance where the hook and balance body are connected by rivets.
KR 200255634 discloses a hooked balance where the hook and balance body are connected by rivets.
CN 101598190 discloses a hooked balance where the hook goes over the back of the balance body.
CN 212499706 to Yang discloses a hooked balance where the hook comprises a cambered window with a barb.
CN 109591510 to Zhang discloses a hooked balance where the hook comprises a cambered window with a barb.
KR 20070100198 to Ku discloses a hooked balance where the hook and balance body are connected by rivets.
CN 105216543 to Liang discloses a hooked balance where the hook and balance body are connected by rivets.
DE 2020070169447 to Haas discloses a hooked balance where the hook and balance body are connected by rivets.
USPN 3,786,850 to Turoczi discloses placing tire weights embodied as English letters as product identifiers on tires.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE HULS whose telephone number is (571)270-5914. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Breene can be reached at (571) 272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATALIE HULS/Primary Examiner, Art Unit 2855
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