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 .
Election/Restrictions
Claims 13-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/26/2026.
Applicant’s election without traverse of claims 1-12 and 16-20 in the reply filed on 06/26/2026 is acknowledged.
Claim Rejections - 35 USC § 102
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 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 1-6 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paul (US2048598A).
Regarding claim 1, Paul discloses a tool head (fig.2 and pages 1-2) for manufacturing a separation disc (capable to be used), the tool head comprising:
a ball (figs.2 and 8: (2)) configured to bear on a work piece to form the separation disc on a rotating mandrel (fig.8: (8));
a holder (fig.2: (1)) configured to hold the ball; and
a fastener (fig.2: (11)) configured to detachably and rotatably arrange the ball element at the holder.
Regarding claim 2, Paul discloses wherein the fastener is detachably arranged on the holder by a threaded joint (fig.2: (12)).
Regarding claim 3, Paul discloses wherein the fastener comprises an opening through which a part of the ball is configured to protrude (fig.2).
Regarding claim 4, Paul discloses wherein the fastener comprises grippers configured for tightening and loosening the fastener at the holder (fig.2: see the grippers of element (15)).
Regarding claim 5, Paul discloses wherein the holder comprises a cavity for at least partly accommodating the ball (fig.2).
Regarding claim 6, Paul discloses wherein the holder (fig.1: (1)) is provided with a first control surface and the fastener (fig.1: (11)) is provided with a second control surface, the first and second control surfaces being configured to control a position of the ball (fig.2).
Regarding claim 17, Paul discloses wherein the fastener comprises an opening through which a part of the ball is configured to protrude fig.2).
Regarding claim 18, Paul discloses wherein the fastener comprises grippers configured for tightening and loosening the fastener at the holding device (fig.2: see the grippers of element (15)).
Regarding claim 19, Paul discloses wherein the fastener comprises grippers configured for tightening and loosening the fastener at the holding device (fig.2: see the grippers of element (15)).
Regarding claim 20, Paul discloses wherein the holder comprises a cavity for at least partly accommodating the ball (fig.2).
Claims 1, 5, 7, 9-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gilbert (EP1195206A1 attached NPL, English Machine translation).
Regarding claim 1, Gilbert discloses a tool head (fig.3a: (6)) for manufacturing a separation disc (capable to be used), the tool head comprising:
a ball (figs.3a: (63)) configured to bear on a work piece to form the separation disc on a rotating mandrel (fig.1: (3));
a holder (figs.3a: (60)) configured to hold the ball; and
a fastener (figs.3a: (66) and (67)) configured to detachably and rotatably arrange the ball element at the holder.
Regarding claim 5, Gilbert discloses wherein the holder comprises a cavity for at least partly accommodating the ball (fig.3a).
Regarding claim 7, Gilbert discloses wherein the holder comprises a fluid channel (figs.3a: (69)) for providing pressure fluid on the ball.
Regarding claim 9, Gilbert discloses wherein the holder comprises a fluid channel (figs.3a: (69)) for providing pressure fluid on the ball,
wherein the fluid channel extends to the cavity (fig.3a), and
wherein the cavity is larger than the ball such that the cavity functions as a reservoir for pressure fluid behind the ball (fig.3a).
Regarding claim 10, Gilbert discloses wherein the ball is made of a heat dissipating material (paragraph 0048: ceramic).
Regarding claim 12, Gilbert discloses wherein the tool head is configured to be connected to a machine tool, the machine tool being connected to a controller, and wherein the machine tool is configured to be controlled by the controller (paragraph 0045).
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 10-11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Paul (GB307034A).
Regarding claim 10, Paul does not disclose wherein the ball is made of a heat dissipating material;
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to Paul to have wherein the ball is made of a heat dissipating material to provide the functionality to act as a ball, since it has been held that the selection of a known material based on its properties for its intended use supported a prima facie obviousness determination. In Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). (MPEP 2144.07).
Regarding claims 11 and 16, Paul discloses wherein the ball has (fig.2: (2))) a spherical shape;
Paul does not disclose with a diameter in the range of 10-40 mm; and a diameter in the range of 15-30 mm.
However, choosing the dimensions of the parts is known in art and would have resulted from engineering practices that depends on the general design and the required dimensions of the parts as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the dimension of ball is desired, including a diameter in the range of 10-40 mm; and a diameter in the range of 15-30 mm in order to obtain a ball with specific dimensions as desired.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Gilbert (EP1195206A1) in view of Ostertag (US4947668A).
Regarding claim 8, Gilbert does not disclose wherein the fastener comprises at least one outlet channel for the pressure fluid.
Ostertag teaches a fastener (figs.1 and 15: (4)) comprises at least one outlet channel (figs.1 and 14: (12)) for a pressure fluid;
Both of the prior arts of Gilbert and Ostertag are related to a tool head comprising a ball;
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the fastener of the apparatus of Gilbert to have at least one outlet channel for the pressure fluid as taught by Ostertag, since it has been held that combining prior art elements according to known methods to yield predictable results requires only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED S ALAWADI whose telephone number is (571)272-2224. The examiner can normally be reached 08:00 am- 05:00 pm.
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/MOHAMMED S. ALAWADI/Primary Examiner, Art Unit 3725
