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 .
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 1-20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1 and the limitation “one of the housing race and the blade race defining a wear band, and the other of the housing race and the blade race defining an annular groove”, the disclosure teaches the wear band 76 with notches 82 on the annular blade and the annular groove 44 on the housing. The above broad language covers the situation in which the wear band 76 with notches 82 on the blade housing. The disclosure does not teach how the rotary blade functioning in that situation.
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 1-4, 7-9, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Long et al. (2004/0134326), hereinafter Long.
Regarding claim 1, Long teaches a rotary knife comprising:
a blade housing 10 including a housing race 20; and
an annular blade 50 including a blade race 56,
one of the housing race and the blade race defining a wear band, and the other of the housing race and the blade race defining an annular groove,
the annular groove receiving the wear band such that the annular blade is rotatably supported by the blade housing,
the wear band having an annular surface,
the wear band including a plurality of surface features (space between two adjacent tabs 56) formed in the annular surface.
See Figs. 1, 2, 3, and 8.
Regarding claim 2, a plurality of notches (space between two adjacent tabs 56) is best seen in Fig. 3.
Regarding claim 3, the notches arranged on the circumference of the wear band are best seen in Fig. 3.
Regarding claim 4, the notches having an arcuate cross-section are best seen in Fig. 3.
Regarding claim 7, the wear band 54 defining an annular lip is best seen in Figs. 1 and 3.
Regarding claims 8, 9, and 12, the notches extending radially on the wear band 54 are best seen in Fig. 3.
Regarding claim 13, the blade race defining the wear band 56, the housing race defining the annular groove 20, the plurality of surface features being circumferentially equispaced about the annular surface of the wear band are best seen in Figs. 1 and 3.
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 5, 6, 10, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Long et al. (2004/0134326), hereinafter Long.
Regarding claim 5, Long teaches the invention substantially as claimed except for the notches having two different shapes.
At the time the invention was made, it would have been an obvious matter of design choice to one skilled in the art to make the notches having two different shapes because the Applicant has not disclosed that such particular different shapes of notches provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the notches having the same shape. In fact, the notches in the embodiment in Fig. 5 of the invention have the same shape.
Therefore, it would have been an obvious matter of design choice to modify the notches in Long to have two different shapes to obtain the invention as specified in claim 5 since such modification does not affect functionality of the rotary knife.
Regarding claim 6, Long teaches the invention substantially as claimed except for the notches being spaced at different distances on the circumference of the wear band.
At the time the invention was made, it would have been an obvious matter of design choice to one skilled in the art to make the notches being spaced at different distances on the circumference of the wear band because the Applicant has not disclosed that such particular arrangement of notches provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the notches being spaced at the same distances. In fact, the notches in the embodiment in Fig. 5 of the invention are spaced at the same distance on the circumference of the wear band.
Therefore, it would have been an obvious matter of design choice to modify the notches in Long such that the notches are spaced at different distances on the circumference of the wear band since such modification does not affect functionality of the rotary knife.
Regarding claims 10 and 11, Long teaches the invention substantially as claimed except for the notches extending radially at different distances.
At the time the invention was made, it would have been an obvious matter of design choice to one skilled in the art to make the notches extending radially at different distances because the Applicant has not disclosed that such particular extension of notches provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the notches extending radially at an equal distance. In fact, the notches in the embodiment in Fig. 5 of the invention extend radially at an equal distance.
Therefore, it would have been an obvious matter of design choice to modify the notches in Long such that they extend radially at different distance to obtain the invention as specified in claims 10 and 11 since such modification does not affect functionality of the rotary knife.
Regarding claim 14, Long teaches the invention substantially as claimed except for 36 notches on the wear band. It would have been obvious to one skilled in the art before the effective filling date of the claimed invention to provide 36 notches on the wear band, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Long et al. (2004/0134326), hereinafter Long, in view of Rapp (2005/0217119).
Regarding claim 15, Long teaches the invention substantially as claimed except for the blade housing having a split. The split on the blade housing is a known feature in a rotary knife.
Rapp teaches a rotary knife having an annular blade 18 and a blade housing 14 with a split 84 for enabling the blade housing expansion or contraction for removing and installing the annular blade. See Fig. 1.
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the claimed invention to make the blade housing in Long having a split as taught by Rapp for enabling the blade housing expansion or contraction for removing and installing the annular blade.
Regarding claim 16, a pinion gear for driving the annular blade is best seen in Fig. 1 in Rapp (element 27) and Fig. 2 in Long (element 72).
Regarding claim 17, the annular blade having a gear ring is best seen in Fig. 1 in Rapp and Fig. 2 in Long.
Regarding claim 18, a plurality of fasteners (60, 40, 62, 70) for securing the blade housing to the knife head is best seen in Fig. 1 in Rapp. The rotary blade in Long also has similar fasteners for securing the blade housing to the knife head since they are conventional features of the rotary knife.
Regarding claim 19, Rapp teaches the rings ends (80, 82) acting as an arcuate relief for receiving a portion of the pinion gear. See Fig. 1. The rotary blade in Long also has similar features since they are conventional features of the rotary knife.
Regarding claim 20, it is known in the art that lubricant is provided to the annular groove of the blade housing for smoothing contact between the blade housing and the annular blade to reduce noise and wear out of the parts. However, Long does not explicitly teach that.
Rapp teaches lubricant being provided to the annular groove of the blade housing for smoothing contact between the blade housing and the annular blade to reduce noise and wear out of the parts. See para. [0020].
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the claimed invention to provide lubricant to the annular groove of the blade housing in Long as taught by Rapp for smoothing contact between the blade housing and the annular blade to reduce noise and wear out of the parts.
Response to Arguments
Applicant's arguments filed on 06/24/2026 have been fully considered but they are not persuasive.
Regarding the check mark in box 11(b) in PTOL-326, the check mark has been placed in box 11(b) by accident. There is not any objection to the drawings.
Regarding Applicant’s argument with respect to 35 USC 112 rejection, para. [0005] and [0046] just provide statements. They do not explain how the annual groove can be on the annual blade and the wear band on the blade housing. For example, if the wear band 76 (Fig. 4) on the annular blade is replaced with the annual groove, it is unclear where the annular groove would be on the blade and what the blade housing looks like with the wear band on it.
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The Applicant argues that Long does not teach “rotation of the annual blade relative the blade housing.” This argument is not persuasive. It appears that the Applicant argues the wear band rotating relative in the annual groove. This limitation is not set forth in the claim language. Claim 1 sets forth “the annular blade is rotatably supported by the blade housing.” The annual blade 50 being rotated and supported in the blade housing 10 is shown in the drawings and known in the art. Therefore, Long reads on the claim language.
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 PHONG H NGUYEN whose telephone number is (571)272-4510. The examiner can normally be reached M-F: 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHONG H NGUYEN/Examiner, Art Unit 3724
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