DETAILED ACTION
This FINAL action is in response to Application No. 19/105,861 originally filed 02/24/2025. The amendment presented on 01/15/2026 which provides amendments to claims 16 and 31-35 and claims 1-15 are cancelled is hereby acknowledged. Currently Claims 16-35 are pending.
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 .
Response to Arguments
Applicant's arguments filed 01/15/2026 have been fully considered but they are not persuasive.
Applicants claimed invention is directed to “a friction-reducing layer adhered to the support member, the friction-reducing layer being configured to make physical contact with an inner surface of the flexible sleeve and reduce friction between the support member and the flexible sleeve”. In summary, Wang teaches the claimed invention except for providing a friction reducing layer adhered to a support member for the express purpose of reducing friction during movement between two elements. In this case, the two elements are a flexible sleeve and support member which are taught in Wang.
Applicant asserts that the combination of Wang and Kent is “Unsatisfactory For Its Intended Purpose And/Or Would Change the Principle of Operation”. Regarding the reference of Kent which relates to the field of input devices for positioning the cursor of computer displays, The Office respectfully disagrees with this assertion. In the cited portions of Kent in Figures 6-7, Kent teaches using a low friction Teflon coating adhered to the support plate 106, not the rollers 34 or 82. (See Column 4 lines 32-48, and Column 9 lines 8-23) Contrary to the statement made by Applicant, Kent, firstly, actually teaches providing this low friction coating adhered to the support plate and not on the surfaces of one or more of the rollers/balls. As discussed in Kent, this encourages the roller ball and rollers, using friction, to rotate “in registry”. The roller ball 82 is provided as a smooth stainless steel bearing and sits / is pressed against the support plate 106 via springs 104 and other members (i.e. “configured to make physical contact with an inner surface”). The roller ball 82 is fitted to rotate in the opening 112 such that it can continue to rotate freely against the support plate 106 because of the Teflon coating. Thus, Kent teaches those of skill in the art were aware that one could use a low friction coating on a support plate, such as Teflon, to reduce friction such that two components can move freely. This movement allows the device to act as an input device and sense movement. In other words, taking the idea of providing a Teflon coating and adhering it to a support plate to allow freer movement of two components was known in view of Kent. Providing said Teflon coating in Wang would not change the principle operation of the device but most certainly improve it as taught by Kent to allow freer movement of the roller ball against the support plate 106.
Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, no other knowledge or rationale was brought into the combination as everything mentioned was taught in either Wang or Kent and thus the rejection did not include knowledge gleaned only from the applicant’s disclosure. Therefore, such a reconstruction is/was proper.
Therefore, upon review, Applicants arguments are not found persuasive and the rejection will be currently maintained.
DETAILED ACTION
This is a first office action in response to application 19/105,861 filed 02/24/20258, in which claims 1-15 are presented for examination. A preliminary amendment was filed concurrently therewith providing cancellation of claims 1-15 and adds new claims 16-35.
Currently claims 16-35 are pending.
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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 16-24, 27, 29-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. U.S. Patent Application Publication No. 2020/0167008 A1 hereinafter Wang in view of Kent et al. United States Patent No. 5,706,026 hereinafter Kent.
Consider Claim 16:
Wang discloses a pointing device, comprising: (Wang, See Abstract.)
a slider bar including a non-circular support member elongated along an axis A1 and comprising a flat or convex user interface support surface; (Wang, [0036], [0045] In certain examples, the sleeve 110 may also include indicia printed on an outside surface thereof, and may be replaceable with a second sleeve by the user. As illustrated, in various embodiments, the sleeve 110 is supported on the elongate base member 108 by one or more bushings 202a, 202b that allow fluid rotation and sliding about the base member 108. Although the base member 108 and sleeve 110 are shown as including a generally tubular shape, in various additional embodiments, the base member 108 and sleeve 110 could include shapes having a generally non-circular cross-section, a cross-section having at least one flat surface and at least one curved surface, or a cross section having at least three rounded corners. The base member 108 may be composed of any durable material, such as aluminum. In various embodiments, the base member 108 is chosen to have a low coefficient of static friction between the base member 108 and sleeve 110 to provide fluid movement of the sleeve 110 about the base member 108.”)
a flexible sleeve disposed around the support member, the flexible sleeve being rotatable about the support member and slidable along the support member along axis A1, a portion of the flexible sleeve being supported by the user interface support surface during normal use, the portion comprising a user interface surface; and (Wang, [0044], “FIG. 2 illustrates one example of the elongate base member 108 and the sleeve 110 shown in FIG. 1. For the purpose of illustration, arrow indicator A represents the first direction about which the sleeve 110 is configured to rotate, and arrow indicator B represents the second direction about which the sleeve 110 is configured to slide. As discussed herein, in certain examples the elongate base member is a hollow tube. In various embodiments, the sleeve 110 can include a tactile material disposed on an outside surface of the sleeve 110, such as a grip 204. The sleeve 110 may also be flexible and composed of one of plastic, cloth, paper, rubber, or other material. In certain embodiments, the sleeve 110 may be composed of a rigid material, and in particular, may take the shape of the elongate base member 108 (e.g., shown as a substantially cylindrical shape). However, in certain other examples the sleeve 110 may have a shape that is substantially different from a shape of the elongate base member 108.”)
a sensor configured to detect rotational and axial movement of the flexible sleeve relative to the elongate support member. (Wang, [0049], “In certain examples, the first zone 0 corresponds to a work area of the pointing device system 100. During detection of the first zone 0 of the pattern 402 on the sleeve, by the sensor, the sensor communicates with the processor (e.g., the processor of a computer) to effect motion of the pointer in the visual display based on the detected motion of the sleeve 110. For instance, rotational movement and axial movement of the sleeve 110 may correspond to vertical and horizontal movements, respectively, of the pointer within the display. While the work area is illustrated as separate from the second zone 1, the third zone 2, the fourth zone 3, and the fifth zone 4, for the purpose of illustration, it is appreciated that the sensor may also detect sleeve movement in each of the other zones 1, 2, 3, 4. That is, during detection of each of the second zone 1, the third zone 2, the fourth zone 3, and the fifth zone 4 of the pattern 402 on the sleeve, the sensor may communicate with the processor to effect the motion of the pointer in the visual display based on the detected motion of the sleeve 110.”)
Wang however does not specify a friction-reducing layer adhered to the support member, the friction- reducing layer being configured to make physical contact with an inner surface of the flexible sleeve and reduce friction between the support member and the flexible sleeve.
Kent however teaches that it as known technique to those having ordinary skill in the art before the to provide low friction coating and therefore teaches a friction-reducing layer adhered to the support member, the friction- reducing layer being configured to make physical contact with an inner surface of the flexible sleeve and reduce friction between the support member and the flexible sleeve.
(Kent, Column 9, (19) “As shown in FIGS. 6 and 7, the sensing rollers 80 are mounted on a support 106 operable to bear against the intermediate roller ball 82, the support 106 being urged toward the intermediate roller ball 82 and toward the contact roller 34 by at least one spring 104, bearing between the housing 58 and the support 106, which in this case is a plate having a central opening 112 fitting partway over the intermediate roller ball 82. The support plate 106 can have a low friction coating such as Teflon, at least in the area of the inward facing edges defining the opening 112. Alternatively, by employing friction enhancing surface configurations on the contact roller 34 and the sensing rollers 80, the intermediate roller ball 82 can be a smooth bearing, e.g., of polished stainless steel, that turns readily in opening 112.”)
It therefore would have been obvious to those having ordinary skill in the art before the effective filing date of the invention to provide a low friction coating to reduce friction as this was a known technique in view of Kent and would be used for the purpose of by employing friction enhancing surface configurations on the contact roller so it can act as a smooth bearing. (Kent, Column 9)
Consider Claim 17:
Wang in view of Kent disclose the pointing device according to claim 16, wherein the support member comprises a first aperture, and wherein the sensor is an optical sensor accommodated within the support member and configured to detect rotational and axial movement of the flexible sleeve relative to the elongate support member via the first aperture. (Wang, [0052], “In certain examples of the pointing device system 100, the elongate base member 108 may include a sensor disposed on a surface of the elongate base member or within the elongate base member 108 (i.e., an inner-sensor). The inner-sensor may be positioned to detect the rotational movement and/or axial movement of the sleeve 110 through an aperture in the elongate base member 108. In further examples, the inner-sensor may further detect proximity of the sleeve 110 to one or more ends of the elongate base member 108. Accordingly, in certain examples the pointing device system 100 may include a single sensor which detects all movements of the sleeve 110 (e.g., rotational, axial, and end detection). Such an example offers the benefits of improved power consumption, improved efficiency, and reduced size and complexity when compared to other pointing devices.”)
Consider Claim 18:
Wang in view of Kent disclose the pointing device according to claim 17, wherein the friction-reducing layer comprises a second aperture aligned with the first aperture, and wherein the optical sensor is further configured to detect rotational and axial movement of the flexible sleeve relative to the support member via the second aperture. (Wang, [0052], “In certain examples of the pointing device system 100, the elongate base member 108 may include a sensor disposed on a surface of the elongate base member or within the elongate base member 108 (i.e., an inner-sensor). The inner-sensor may be positioned to detect the rotational movement and/or axial movement of the sleeve 110 through an aperture in the elongate base member 108. In further examples, the inner-sensor may further detect proximity of the sleeve 110 to one or more ends of the elongate base member 108. Accordingly, in certain examples the pointing device system 100 may include a single sensor which detects all movements of the sleeve 110 (e.g., rotational, axial, and end detection). Such an example offers the benefits of improved power consumption, improved efficiency, and reduced size and complexity when compared to other pointing devices.”)
Consider Claim 19:
Wang in view of Kent disclose the pointing device according to claim 16, wherein the friction-reducing layer is a cloth. (Kent, Column 9, (19) “As shown in FIGS. 6 and 7, the sensing rollers 80 are mounted on a support 106 operable to bear against the intermediate roller ball 82, the support 106 being urged toward the intermediate roller ball 82 and toward the contact roller 34 by at least one spring 104, bearing between the housing 58 and the support 106, which in this case is a plate having a central opening 112 fitting partway over the intermediate roller ball 82. The support plate 106 can have a low friction coating such as Teflon, at least in the area of the inward facing edges defining the opening 112. Alternatively, by employing friction enhancing surface configurations on the contact roller 34 and the sensing rollers 80, the intermediate roller ball 82 can be a smooth bearing, e.g., of polished stainless steel, that turns readily in opening 112.”)
Consider Claim 20:
Wang in view of Kent disclose the pointing device according to claim 16, wherein the friction-reducing layer comprises PTFE. (Kent, Column 9, (19) “As shown in FIGS. 6 and 7, the sensing rollers 80 are mounted on a support 106 operable to bear against the intermediate roller ball 82, the support 106 being urged toward the intermediate roller ball 82 and toward the contact roller 34 by at least one spring 104, bearing between the housing 58 and the support 106, which in this case is a plate having a central opening 112 fitting partway over the intermediate roller ball 82. The support plate 106 can have a low friction coating such as Teflon, at least in the area of the inward facing edges defining the opening 112. Alternatively, by employing friction enhancing surface configurations on the contact roller 34 and the sensing rollers 80, the intermediate roller ball 82 can be a smooth bearing, e.g., of polished stainless steel, that turns readily in opening 112.”)
Consider Claim 21:
Wang in view of Kent disclose the pointing device according to claim 16, and teach each and every element however do not specify sizing wherein the cross-section of the flexible sleeve substantially perpendicularly to the axis Al while disposed on the support member has a maximum width W2 and a maximum height H2 defined by mutually perpendicular axes A2 and A3, respectively, and wherein axes A2 and A3 are both perpendicular to axis A1, and wherein axis A2 is parallel to at least one point on the user interface support surface of the support member, and wherein the maximum width W2 is greater than the maximum height H2.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 22:
Wang in view of Kent disclose the pointing device according to claim 21, and teach each and every element however do not specify sizing wherein the maximum width W2 of the cross-section of the flexible sleeve is between 20 mm and 42 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 23:
Wang in view of Kent disclose the pointing device according to claim 22, and teach each and every element however do not specify sizing wherein the maximum height H2 of the cross-section of the flexible sleeve is between 18 mm and 22 mm, and wherein the maximum width W2 of the cross-section of the flexible sleeve is 28 mm and 34 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 24:
Wang in view of Kent disclose the pointing device according to claim 21, and teach each and every element however do not specify sizing wherein the maximum height H2 of the cross-section of the flexible sleeve is between 13 mm and 27 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 27:
Wang in view of Kent disclose the pointing device according to claim 16, wherein the flexible sleeve comprises silicone. (Wang, [0044], “FIG. 2 illustrates one example of the elongate base member 108 and the sleeve 110 shown in FIG. 1. For the purpose of illustration, arrow indicator A represents the first direction about which the sleeve 110 is configured to rotate, and arrow indicator B represents the second direction about which the sleeve 110 is configured to slide. As discussed herein, in certain examples the elongate base member is a hollow tube. In various embodiments, the sleeve 110 can include a tactile material disposed on an outside surface of the sleeve 110, such as a grip 204. The sleeve 110 may also be flexible and composed of one of plastic, cloth, paper, rubber, or other material. In certain embodiments, the sleeve 110 may be composed of a rigid material, and in particular, may take the shape of the elongate base member 108 (e.g., shown as a substantially cylindrical shape). However, in certain other examples the sleeve 110 may have a shape that is substantially different from a shape of the elongate base member 108.”)
Consider Claim 29:
Wang in view of Kent disclose the pointing device according to claim 28, and teach each and every element however do not specify sizing wherein the thickness of the flexible sleeve is between 0.20 mm and 0.28 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 30:
Wang in view of Kent disclose the pointing device according to claim 16, and teach each and every element however do not specify sizing wherein the thickness of the flexible sleeve is between 0.10 mm and 0.40 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 31:
Wang in view of Kent disclose the pointing device according to claim 16, and teach each and every element however do not specify sizing wherein the maximum length of the support member is between 200 mm and 420 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 32:
Wang in view of Kent disclose the pointing device according to claim 31, wherein the maximum length of the support member is between 280 mm and 340 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 33:
Wang in view of Kent disclose the pointing device according to claim 31, and teach each and every element however do not specify sizing wherein the maximum length of the flexible sleeve is between 170 mm and 330 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 34:
Wang in view of Kent disclose the pointing device according to claim 16, and teach each and every element however do not specify sizing wherein the user interface surface has a length (L5) of between 100 mm and 250 mm, and wherein the user interface surface has a width (W3) of between 23 mm and 35 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Consider Claim 35:
Wang in view of Kent disclose the pointing device according to claim 34, and teach each and every element however do not specify sizing wherein the user interface surface has a length (L5) of between 150 mm and 190 mm, and wherein the user interface surface has a width (W3) of 27 mm and 31 mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to size the elements as claimed, 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 (C.C.P.A. 1955).
Claim Rejections - 35 USC § 103
Claim(s) 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. U.S. Patent Application Publication No. 2020/0167008 A1 in view of Kent et al. United States Patent No. 5,706,026 as applied to claim 16 above, and further in view of Nien et al. U.S. Patent Application Publication No. 2012/0162070 A1 hereinafter Nien.
Consider Claim 25:
Wang in view of Kent disclose the pointing device according to claim 16, wherein the flexible sleeve comprises a plurality of elongated structures disposed on the outer surface of the flexible sleeve and along a length of the flexible sleeve, and wherein the elongated structures are configured to increase the stiffness of the flexible sleeve along the axis A1.
Nien however teaches that it was a known technique in the art before the effective filing date of the invention wherein the flexible sleeve comprises a plurality of elongated structures disposed on the outer surface of the flexible sleeve and along a length of the flexible sleeve, and wherein the elongated structures are configured to increase the stiffness of the flexible sleeve along the axis A1. (Nien, [0018], [0069], “The sleeve 320 may be made of a suitable material in order to provide desired elasticity and flexibility. For example, the sleeve 320 is made of mesh fabric, nonwoven fabric, plastic material, rubber or leather. Moreover, several friction structures 322 are formed on the outer surface of the sleeve 320 for providing a friction force for facilitating the user to rotate or move the sleeve 320. For example, the friction structures 322 are a plurality of convex structures having a coefficient of friction higher than the sleeve 320 and disposed on the outer surface of the sleeve 320 along the longitudinal axis of the sleeve 320 (or slightly tilted relative to the longitudinal axis of the sleeve 320). In some embodiments, the friction structures on the sleeve are non-linear. For example, the friction structures are saw-toothed stripes composed of a plurality of straight line segments or arc segments, or the friction structures are spiral line segments. Alternatively, the angle between any two adjacent straight line segments of the plurality of straight line segments is not always 180 degrees. Optionally, in addition to the linear friction structures, the friction structures may have other regular shapes (for example a plurality of circular, elliptic, square, regular polygonal friction structures are arranged in a strip) or irregular shapes (for example a plurality of polygonal friction structures are arranged in a strip). Moreover, these linear friction structures are substantially evenly distributed on the outer surface of the sleeve. For example, these linear friction structures are evenly distributed on the outer surface of the sleeve, or the density of distributing the linear friction structures on the outer surface of the sleeve is nearly identical.”)
Consider Claim 26:
Wang in view of Kent in view of Nien disclose the pointing device according to claim 25, howoever does not specify wherein the plurality of elongated structures comprises carbon. (Nien, [0018], [0069], “The sleeve 320 may be made of a suitable material in order to provide desired elasticity and flexibility. For example, the sleeve 320 is made of mesh fabric, nonwoven fabric, plastic material, rubber or leather. Moreover, several friction structures 322 are formed on the outer surface of the sleeve 320 for providing a friction force for facilitating the user to rotate or move the sleeve 320. For example, the friction structures 322 are a plurality of convex structures having a coefficient of friction higher than the sleeve 320 and disposed on the outer surface of the sleeve 320 along the longitudinal axis of the sleeve 320 (or slightly tilted relative to the longitudinal axis of the sleeve 320). In some embodiments, the friction structures on the sleeve are non-linear. For example, the friction structures are saw-toothed stripes composed of a plurality of straight line segments or arc segments, or the friction structures are spiral line segments. Alternatively, the angle between any two adjacent straight line segments of the plurality of straight line segments is not always 180 degrees. Optionally, in addition to the linear friction structures, the friction structures may have other regular shapes (for example a plurality of circular, elliptic, square, regular polygonal friction structures are arranged in a strip) or irregular shapes (for example a plurality of polygonal friction structures are arranged in a strip). Moreover, these linear friction structures are substantially evenly distributed on the outer surface of the sleeve. For example, these linear friction structures are evenly distributed on the outer surface of the sleeve, or the density of distributing the linear friction structures on the outer surface of the sleeve is nearly identical.”)
Claim Rejections - 35 USC § 103
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. U.S. Patent Application Publication No. 2020/0167008 A1 in view of Kent et al. United States Patent No. 5,706,026 as applied to claim 16 above, and further in view of Tokisue et al. U.S. Patent Application Publication No. 2001/0018094 A1 hereinafter Tokisue.
Consider Claim 28:
Wang in view of Kent disclose the pointing device according to claim 16, wherein an inner surface of the flexible sleeve has been treated with UV light so as to lower the friction of the inner surface of the flexible sleeve.
Tokisue however teaches (Tokisue, [0100], “Still another method of the surface treatment of a magnetic head slider is explained below. This slider 23 was composed of a slider body of alumina titanium carbide and a carbon thin layer formed thereon in a thickness of 8 nm by sputtering under the conditions that nitrogen was mixed. This slider was immersed in a fluorosilane solution and the latter was attached to the former by dipping. Subsequently, it was irradiated with an ultraviolet light using a low pressure mercury vapor lamp in an ozone atmosphere. The ultraviolet light irradiation was conducted at an intensity of 50 mW/cm.sup.2 for 10 minutes. Thereafter, using temperature as a parameter, baking treatment was conducted at a temperature between 30.degree. C. and 250.degree. C. for about 20 minutes. As to the stiction resistance performance of the slider subjected to this treatment, the results obtained by measuring friction force at the time of the starting are shown in FIG. 16. The friction force of the non-treated slider was as high as 8 gf, while the slider subjected to the ultraviolet light treatment was generally low in friction force, and it was found to have a dependency on the subsequent baking temperature. At 30.degree. C., the friction force was 6 gf and hence its reduction effect was small, while at 50.degree. C., it was lowered to 4 gf or less and the said tendency was not so varied though when the baking temperature was elevated some elevation of the friction force was seen. However, when it exceeded 200.degree. C., the lowering of the friction force was inversely seen. The reason therefor was not clear, but it is considered to result from the change of the molecular structure or the deterioration of the strength of the undercoat. According to the experiment of the present inventors, it is desirable to adjust the baking temperature in the range of 50 to 150.degree. C.”)
The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations as in Tokisue for reducing friction of a carbon-based element by introducing a UV light treatment. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. "It's enough … to show that there was a known problem … in the art, that [another reference] … helped address that issue, and that combining the teachings of [the two references] wasn't beyond the skill of an ordinary artisan. Nothing more is required to show a motivation to combine under KSR." See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380-81, 2023 USPQ2d 297 (Fed. Cir. 2023) (finding that both prior art references "address the same problem and that [the secondary reference’s] cache was a known way to address that problem is precisely the reason that there's a motivation to combine under KSR and our precedent.").
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Prior art made of record and not relied upon which is still considered pertinent to applicant's disclosure is cited in a current or previous PTO-892. The prior art cited in a current or previous PTO-892 reads upon the applicants claims in part, in whole and/or gives a general reference to the knowledge and skill of persons having ordinary skill in the art before the effective filing date of the invention. Applicant, when responding to this Office action, should consider not only the cited references applied in the rejection but also any additional references made of record.
In the response to this office action, the Examiner respectfully requests support be shown for any new or amended claims. More precisely, indicate support for any newly added language or amendments by specifying page, line numbers, and/or figure(s). This will assist The Office in compact prosecution of this application. The Office has cited particular columns, paragraphs, and/or line numbers in the applied rejection of the claims above for the convenience of the applicant. Citations are representative of the teachings in the art and are applied to the specific limitations within each claim, however other passages and figures may apply. Applicant, in preparing a response, should fully consider the cited reference(s) in its entirety and not only the cited portions as other sections of the reference may expand on the teachings of the cited portion(s).
Applicant Representatives are reminded of CFR 1.4(d)(2)(ii) which states “A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.” When an unsigned or improperly signed amendment is received the amendment will be listed in the contents of the application file, but not entered. The examiner will notify applicant of the status of the application, advising him or her to furnish a duplicate amendment properly signed or to ratify the amendment already filed. In an application not under final rejection, applicant should be given a two month time period in which to ratify the previously filed amendment (37 CFR 1.135(c) ).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J JANSEN II whose telephone number is (571)272-5604. The examiner can normally be reached Normally Available Monday-Friday 9am-4pm EST.
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/Michael J Jansen II/ Primary Examiner, Art Unit 2626