DETAILED ACTION
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, 9, 11-14, 17-19, 22, 23, 25, and 27-29 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 claim(s) contains 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. The subject matter which was not described in the specification includes; a reduction in rotational, orbital or random orbital speed of the abrasive article by at least 90% before the trajectory endpoint is reached; a reduction in applied force by at least 90% before the trajectory endpoint is reached; or a separation of the abrasive article and the surface before the trajectory endpoint is reached." The features do not specify with respect to what value the speed or force are reduced "by at least 90%". Also, the claim doesn’t specify when and/or where "before the trajectory endpoint is reached" these two parameters are reduced or the "separation of the abrasive article and the surface" is reached. further, claims 9, 11-14, 17, 19, 22, 25, 27-29, the features do not specify with respect to what value the speed or force are reduced. Claims 18 and 23, the limitation “a negative value” has not been described clearly in the claims and specification.
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 1-29 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.
Claims 1, 9, and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: The value the speed or force in order to achieve the reduction.
In claim 18 and 23, it is not clear what "a negative value" encompasses.
Allowable Subject Matter
The allowability of the claims cannot be defined due to the lack of clarity to apply any prior art at this time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR FLORES SANCHEZ whose telephone number is (571)272-4507. The examiner can normally be reached Monday thru Thursday8:00-4:00 pm.
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/OMAR FLORES SANCHEZ/Primary Examiner, Art Unit 3724
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