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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/396,113
`
`08/06/2021
`
`Keun Chul SONG
`
`PK5914918
`
`9542
`
`NOVICK, KIM & LEE, PLLC, dba NKL Law
`3251 Blenheim Blvd.
`SUITE 500
`FAIRFAX, VA 22030
`
`SCOVILLE, BLAKE B
`
`3671
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/14/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`docket0O1 @nkllaw.com
`docket02 @nkllaw.com
`skim @ nkllaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(¥] The specification is objected to by the Examiner.
`11){¥} The drawing(s)filed on 06 August 2021 is/are: a)(J accepted or b)¥ objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230512
`
`Application No.
`Applicant(s)
`17/396,113
`SONG etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BLAKE SCOVILLE
`3671
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 06 August 2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Drawings
`
`The drawingsare objected to because Fig 8B and Fig 8C depict the same details. The
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`specification states that Fig 8B should depict the coupling unit in the process of rotating from the first
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`rotation state to the second rotation state. Corrected drawing sheets in compliance with 37 CFR
`
`1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any
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`amendedreplacement drawing sheet should include all of the figures appearing on the immediate prior
`
`version of the sheet, even if only one figure is being amended. The figure or figure numberof an
`
`amendeddrawing should not be labeled as “amended.” If a drawing figure is to be canceled, the
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`appropriate figure must be removed from the replacement sheet, and where necessary, the remaining
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`figures must be renumbered and appropriate changes made to the brief description of the several views
`
`of the drawings for consistency. Additional replacement sheets may be necessary to show the
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`renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant
`
`to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and
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`informed of any required corrective action in the next Office action. The objection to the drawingswill
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`not be held in abeyance.
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 3
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`Specification
`
`The title of the invention is not descriptive. A new title is required that is clearly indicative of
`
`the invention to which the claims are directed.
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
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`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 ordinaryskill 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 contentsofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating obviousness or
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`nonobviousness.
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 4
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`Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ryu (KR 101817064)
`
`(cited by Applicant) in further in view of Hayashi (Japanese Patent No. 2011042976)(cited by
`
`Applicant).
`
`Regardingclaim 1, Ryu discloses a combined structure comprising:
`
`a coupling target object having a coupling space that comprises a first space and a
`
`second space communicating with each other (target object 2, first and second spaces 215 and
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`212a);
`
`a damperstructure accommodatedin the first space, and comprising a flexible portion
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`and a hard portion coupled to the flexible portion and having one surface exposed to an outside
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`(damper 4 with flexible portion 42 and hard portion 41); and
`
`a coupling unit accommodatedin the second space, a portion of which is in contact with
`
`one surface of the hard portion (coupling unit 31; Fig 5),
`
`wherein, in response to rotation of the coupling unit in the second space, another
`
`portion different from the portion of the coupling unit comes into contact with the hard portion
`
`(Figs 5a-c),
`
`wherein when the coupling unit rotates in one direction from an initial state, in which
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`the coupling unit is inserted into the second space, to become a first rotation state, a portion
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`wherethe coupling unit and the hard portion contact each other is movedin a direction toward
`
`the flexible portion further than the initial state, and thus, the hard portion is moved in the
`
`direction toward the flexible portion further than the initial state (Figs 5a-b), and
`
`wherein theflexible portion is compressed and deformed between the hard portion and
`
`an inner surface of the coupling target object forming the first space (Figs 3 and 5a-b).
`
`Ryufails to disclose the flexible portion of the damper having a hollow thatis closed
`
`from the outside.
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 5
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`However, Hayashi discloses a similar damper structure (7) for a similar function
`
`(abstract) with a hard portion (10) and a flexible portion (9) having a hollow (13) that is closed
`
`from the outside (Fig 5 depicts the hollows being away from the hole 6a when installed which is
`
`considered to be closed from the outside).
`
`Ryu and Hayashi are considered analogous to the claimed invention becausethey are in
`
`the same field of endeavor. Therefore, it would have been obvious to someone ofordinaryskill
`
`in the art before the effectivefiling date of the claimed invention to have modified Ryu to
`
`incorporate the teachings of Hayashi and combined the use of hollowsin the flexible portion of
`
`the damperstructure with a reasonable expectation of success. One would have done this to
`
`allow for better elastic deformation of the flexible portion.
`
`Regarding claim 2, Ryu further discloses the combined structure wherein the damper
`
`structure comprises:
`
`a coupling surface coupled to the hard portion;
`
`a support surface positioned on an opposite side of the coupling surface; and
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`a connection surface connecting the coupling surface and the support surface (see
`
`Annotated Figure 1),
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`wherein the support surface and the connection surface are in contact with the inner
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`surface of the coupling target object forming the first space (Fig 3, detail “C”).
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 6
`
`
`
`connectioionnsurface
`Rae Ae ae~_—-
`
`
`
`ws
`pesoeeeeeeSeeEEEEEEEEEEREEEEDEUCEEEUUAS,
`
`SPPLLLSIELLL,
`
`th
`
`geenEA,
`Letty,
`Lgoee support surface
`NecooncceeneceeeccoicccocOOS
`
`r]
`
`coe a
`
`
`
`entetestits
`
`“prasseresesle
`coupling surface |
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`
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`
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`
`Annotated Figure 1
`
`Regarding claim 3, Ryu further discloses the combined structure wherein at least a part
`
`of an externally exposed portion of the coupling surface is in contact with the inner surface of
`
`the coupling target object forming the first space (Fig 3, detail “C”)
`
`Regarding claim 4, Ryu further discloses the combined structure wherein the flexible
`
`portion is in contact with the inner surface of the coupling target object forming the first space
`
`(Fig 3, detail “C”).
`
`Regarding claim 5, Ryu further discloses the combined structure wherein when the
`
`coupling unit further rotates in the one direction in thefirst rotation state to become a second
`
`rotation state, the portion where the coupling unit and the hard portion contact each other is
`
`movedin a direction toward the coupling unit further than in the first rotation state, the hard
`
`portion is moved in a direction toward the coupling unit further than in the first rotation state
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 7
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`and thus, at least a part of the flexible portion is restored from being compressed and deformed
`
`in the first rotation state (Figs 5b-c; the hard portion 41 moves toward the coupling unit 31).
`
`Regardingclaim 6, Hayashi, of the combination above, further discloses the combined
`
`structure wherein a shape of the flexible portion is deformed to reduce a volume of the hollow,
`
`and wherein when an external force applied to the hard portion is reduced by rotation of the
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`coupling unit in a state in which the volume of the flexible portion is reduced, a volume of the
`
`hollow is restored (para [0022]; when compressed by an increasein external force, the elastic
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`material escapes into the hollows 13; therefore, the volume of the hollow is reduced).
`
`Regarding claim 7, applicant claim language “formed open, and wherein the damper
`
`structure further comprises a sealing portion blocking an open side of the hollow” does not
`
`further define any of the specific structure of the damper structure that distinguishesit from the
`
`prior art. This claim limitation is directed to a product-by-processlimitation.
`
`It is noted wherein
`
`the patentability of a product does not necessarily depend on its method of production. See
`
`MPEP section 2113 Product-by-Process, which states, if the product in the claim is the same as
`
`or obvious from a productof the prior art, the claim is unpatentable even though the prior
`
`product was made by a different process.
`
`In the instant case, the combination of Ryu and
`
`Hayashi disclose the same claimed structure although not necessarily assembled as claimed by
`
`forming a hollow open and then sealing the open side. As such, the claim is considered to be
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`anticipated by Ryu and Hayashi as the same claimed structure has been taught.
`
`Yet, Ryu and Hayashi still disclose the combined structure wherein at least one side of
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`the hollow is formed open, and wherein the damper structure further comprises a sealing
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`portion blocking an open side of the hollow (sealing portion would be considered to be the inner
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 8
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`wall of the coupling target object; the inner wall would push up against the open side of the
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`hollows).
`
`Regarding claim 8, Ryu further discloses the combined structure wherein the coupling
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`target object is a tooth point of an excavator, and wherein the coupling unit couples the
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`coupling target object to a tooth adapter (tooth 2 and tooth adapter 1).
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`Conclusion
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`disclosure.
`
`e
`
`Edmonds (U.S. Patent Application Publication No. 20160083935) discloses a similar
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`coupling unit and damperstructure to the claimed invention.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to BLAKE SCOVILLE whose telephone number is (571)270-7654. The examiner can
`
`normally be reached M-F 10:30-6 (ET).
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Tom Will can be reached on (571) 272-6998. The fax phone number for the organization wherethis
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`application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit
`
`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 9
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like
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`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/THOMASB WILL/
`Supervisory Patent Examiner, Art Unit 3671
`
`/BLAKE E SCOVILLE/
`Examiner, Art Unit 3671
`
`