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 .
Specification
The abstract of the disclosure is objected to because the first sentence repeats information given in the title and uses the phrase (that could be implied) “are provided”. Correction is required. MPEP § 608.01(b). No new matter should be entered.
Claim Rejections – 35 U.S.C. § 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 1-20 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.
Claim 1 recites the limitation “a fixed guard mounted around the grinding wheel and having an opening” (line 2). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, the claimed invention is an assembly for guarding a grinding wheel, and not the grinder or its grinding wheel. Therefore, this conflicts with the limitation, which appears to require the fixed guard to be actually mounted around the grinding wheel. For examination purposes, this limitation is interpreted to mean that the fixed guard is configured to be mounted around a grinding wheel (when installed). Claim 11 recites a similar limitation and is indefinite for the same reason because the claimed method is for manufacturing an assembly for guarding a grinding wheel, and does not include a method for manufacturing the grinding wheel or the bench grinder. Claims 2-10 and 12-20 are rejected on the basis they incorporate this limitation of claim 1 and 11 respectively.
Claim 3 recites the limitation “wherein the position spans from a first position to a second position” (lines 1-2). This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Specifically, it is unclear how a singular position (in claim 1) could span or include a plurality of positions. Examiner suggests amending the claim to refer to a plurality of position, such as “wherein the position is one of a plurality of positions that span from a first position to a second position”. For examination purposes, this will be the interpretation used. Claim 13 recites the same limitation and is indefinite for the same reason.
Claim Rejections – 35 U.S.C. § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Chen
Claims 1, 4, 11, and 14 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by CN 210189393 U (“Chen”) (citations are to the translation filed herewith).
Regarding claim 1, Chen discloses an assembly for guarding a grinding wheel of a bench grinder (Figs. 1-2; ¶¶ 0021-0027, assembly as shown is capable of guarding a grinding wheel, including a wheel of a bench grinder, depending on the configuration of the unspecified bench grinder (e.g., attachment of the assembly to a bench grinder via the central fastener); Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)),
the assembly comprising:
a fixed guard mounted around the grinding wheel and having an opening, the opening providing access to the grinding wheel (Figs. 1-2; ¶¶ 0021-0027, fixed guard 1 is capable of being mounted around a grinding wheel and fixed relative to a bench grinder (e.g., via the central fastener) and has at least one opening (e.g., below reference 1) that provides access to a grinding wheel when the guard is used with a grinding wheel; Examiner notes that the “grinding wheel” is not positively claimed; see § 112(b) rejection above);
a sliding guard disposed over the fixed guard and designed to slide over the fixed guard to cover or uncover the opening (Figs. 1-2; ¶¶ 0021-0027, sliding guard 2 is disposed over fixed guard 1 and is capable of sliding over fixed guard 1 to cover or uncover the opening);
and a locking device designed to fix a position of the sliding guard relative to the fixed guard (Figs. 1-2; ¶¶ 0021-0027, locking device 8/9/10 is capable of fixing the position of the sliding guard 2 relative to the fixed guard 1 via holes 5).
Regarding claim 4, Chen discloses the assembly of claim 1 as applied above and further discloses wherein: the sliding guard has a slot; and the locking device is partially disposed in the slot (Figs. 1-2; ¶¶ 0021-0027, sliding guard with slot 6, locking device 8/9/10 is partially disposed in slot 6).
Regarding claims 11 and 14, these method claims are identical to claims 1 and 4 respectively, except that the method claims recite a method for manufacturing the apparatus of the corresponding apparatus claims, where the method steps include the term “providing” followed by the same recited elements of the corresponding apparatus claim (i.e., there are no other method steps recited). The patentability of a claim does not depend on its method of production. MPEP § 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Accordingly, claims 11 and 14 are anticipated by Chen because the claimed structure is disclosed by Chen and the product-by-process limitations of claims 11 and 14 do not result in any structural differences compared to Chen.
Claim Rejections – 35 U.S.C. § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Chen
Claims 2-3 and 12-13 are rejected under 35 U.S.C. § 103 as being unpatentable over CN 210189393 U (“Chen”) (citations are to the translation filed herewith).
Chen pertains to a guard for a grinding wheel (Figs. 1-2; ¶¶ 0021-0027) and is in the same field of endeavor.
Regarding claim 2, Chen discloses the assembly of claim 1 as applied above and further discloses wherein: the sliding guard includes a groove; and the fixed guard includes a rib designed to receive the groove (Figs. 1-2; ¶¶ 0021-0027, the fixed guard 1 includes a groove 3 and the sliding guard 2 includes a rib (at reference 4) for receiving groove 3; see discussion below re the configuration of groove 3 and rib 4; “to receive” is interpreted broadly to include the meaning of making contact with).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to modify Chen to reverse the configuration of the groove 3 and rib 4, such that the sliding guard 2 has a groove on the interior surface and the fixed guard 1 has a rib 4 (that extends outward from the exterior surface) for receiving the groove. This would have been obvious to a person of ordinary skill in the art because this reversal is only a matter of design choice and the specification and evidence of record fail to attribute any significance (novel or unexpected results) to any particular arrangement of those features. In re Gazda, 219 F.2d 449, 451, 452, n.1 (CCPA 1955) (“to reverse the operation of the relatively moving parts...would not amount to invention, mere reversal of such movement being an obvious expedient”); MPEP § 2144.04(VI)(A). Further, this reversal would provide more clearance inside the fixed guard 1 (due to the removal of the inwardly directed groove 3), which would allow for the apparatus to be used with a comparatively thicker grinding wheel.
Regarding claim 3, Chen discloses the assembly of claim 1 as applied above and further discloses wherein the position spans from a first position to a second position, the first position corresponding to complete covering of the opening of the fixed guard by the sliding guard and the second position corresponding to complete uncovering of the opening of the fixed guard (Figs. 1-2; ¶¶ 0021-0027, fixed guard 1 has an arc greater than 180° (¶ 0021), so that when sliding guard 2 (as shown in Fig. 1) is rotated clockwise to a first position, the entirety of the opening (below reference 1 as shown in Fig. 1) of fixed guard 1 is covered, and when sliding guard 2 is rotated counterclockwise to a second position, the entirety of the fixed guard 1 is uncovered).
To the extent Chen does not anticipate claim 3 (because the actual arc of fixed guard 1 is not specified beyond being greater than 180°, such that the opening of the fixed guard is not completely covered by the sliding guard 2 in the first position, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to modify the fixed guard 1 to have a first arc size (e.g., 210°), and to modify the sliding guard 2 to have a second arc size (e.g., 170°; Chen ¶ 0021), such that the sum of their arcs exceed 360°. This would have been obvious because this modification falls within the specified ranges for their arcs (Chen ¶ 0021), and this specific example would allow for a complete 360° surrounding of the grinding wheel, which would be useful in certain circumstances to prevent injury to the user (e.g., for an emergency covering of the entire circumference of the grinding wheel due to impending grinding wheel breakage or failure during operation).
Regarding claims 12 and 13, these method claims are identical to claims 2 and 3 respectively, except that the method claims recite a method for manufacturing the apparatus of the corresponding apparatus claims, where the method steps include the term “providing” followed by the same recited elements of the corresponding apparatus claim (i.e., there are no other method steps recited). The patentability of a claim does not depend on its method of production. MPEP § 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Accordingly, claims 12 and 13 are rendered obvious by Chen because the claimed structure is disclosed by Chen and the product-by-process limitations of claims 12 and 13 do not result in any structural differences compared to Chen.
Chen in view of Wang
Claims 5-10 and 15-20 are rejected under 35 U.S.C. § 103 as being unpatentable over CN 210189393 U (“Chen”) in view of CN 209902903 U (“Wang”) (citations are to the translations filed herewith).
Chen pertains to a guard for a grinding wheel (Figs. 1-2; ¶¶ 0021-0027). Wang pertains to a bench grinder (Figs. 1-4). These references are in the same field of endeavor.
Regarding claim 5, Chen discloses the assembly of claim 1 as applied above. Chen does not explicitly disclose a spark plate mounted at an end of the sliding guard, the spark plate being positioned at a predetermined angle with respect to the sliding guard. However, the Chen/Wang combination makes obvious this claim.
Wang discloses a spark plate mounted at an end of the sliding guard, the spark plate being positioned at a predetermined angle with respect to the sliding guard (Figs. 1-4; ¶¶ 0029-0038, spark plate 15 is mounted at an end of guard 9 and is at a predetermined angle relative to the guard 9; see discussion below re “sliding guard”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Wang with Chen by adding the spark baffles 1 (including elements 11-16) to the end of the sliding guard 2 of Chen. This would have been obvious to a person of ordinary skill in the art because the spark baffle 1 (including spark plate 15 and eye shield 12) would block flying debris (due to the rotation of the grinding wheel) and make the apparatus safer to operate (Wang ¶¶ 0029, 0038).
Regarding claim 6, the Chen/Wang combination makes obvious the assembly of claim 5 as applied above. Wang further discloses wherein a distance between an edge of the spark plate and an edge of the opening is adjustable (Figs. 1-4; ¶¶ 0029-0038, bottom edge (near reference 16) of spark plate 15 is adjustable (via screws 16) to adjust the distance between that bottom edge and an edge of the opening (e.g., the edge closest to screws 16 when mounted (see Fig. 1; ¶ 0030))).
The obviousness rationale for claim 6 is the same as for claim 5.
Regarding claim 7, the Chen/Wang combination makes obvious the assembly of claim 5 as applied above. Wang further discloses an eye shield pivotally mounted onto the spark plate (Figs. 1-4; ¶¶ 0029-0038, eye shield 12 is pivotably mounted to spark plate 15 via adjustment bolt 14, where the angle between spark plate 15 and eye shield 12 is adjustable and fixed at a selected angle using bolt 14 (see Fig. 2; ¶ 0030)).
The obviousness rationale for claim 7 is the same as for claim 5.
Regarding claim 8, the Chen/Wang combination makes obvious the assembly of claim 7 as applied above. Wang further discloses wherein an angle between the spark plate and the eye shield is adjustable (Figs. 1-4; ¶¶ 0029-0038, eye shield 12 is pivotably mounted to spark plate 15 via adjustment bolt 14, where the angle between spark plate 15 and eye shield 12 is adjustable and fixed at a selected angle using bolt 14 (see Fig. 2; ¶ 0030)).
The obviousness rationale for claim 8 is the same as for claim 7.
Regarding claim 9, the Chen/Wang combination makes obvious the assembly of claim 8 as applied above. Wang further discloses a locking mechanism to fix the angle between the spark plate and the eye shield (Figs. 1-4; ¶¶ 0029-0038, eye shield 12 is pivotably mounted to spark plate 15 via adjustment bolt 14, where the angle between spark plate 15 and eye shield 12 is adjustable and fixed at a selected angle using bolt 14 (see Fig. 2; ¶ 0030)).
The obviousness rationale for claim 9 is the same as for claim 8.
Regarding claim 10, the Chen/Wang combination makes obvious the assembly of claim 7 as applied above. Wang further discloses wherein the eye shield is made of a transparent material (Figs. 1-4; ¶¶ 0029-0038, eye shield 12 is made of a transparent material).
The obviousness rationale for claim 10 is the same as for claim 7.
Regarding claims 15-20, these method claims are identical to claims 5-10 respectively, except that the method claims recite a method for manufacturing the apparatus of the corresponding apparatus claims, where the method steps include the term “providing” followed by the same recited elements of the corresponding apparatus claim (i.e., there are no other method steps recited). The patentability of a claim does not depend on its method of production. MPEP § 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Accordingly, claims 15-20 are rendered obvious by the Chen/Wang combination because the claimed structure is rendered obvious by the Chen/Wang combination and the product-by-process limitations of claims 15-20 do not result in any structural differences compared to the Chen/Wang combination.
Status of Claims
Claims 1-20 are pending. Claims 1-20 are rejected.
Conclusion
The prior art made of record on Form PTO-892 and not relied upon is considered pertinent to Applicant’s disclosure because the references pertain to bench grinders and covers for grinding wheels that are similar to the disclosed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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/KENT N SHUM/ Date: August 15, 2026Examiner, Art Unit 3723
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