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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
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`DELIVERY MODE
`
`11/13/2023
`
`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)
`
`

`

`
`
`Application Papers
`10)¥] The specification is objected to by the Examiner.
`11)(¥ The drawing(s)filed on 13 September 2023 is/are: a){¥| accepted or b)L) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`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:
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231024
`
`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 13 September 2023.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J 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.
`
`Disposition of Claims*
`) 1-6 and8is/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) 1-6and8is/are rejected.
`1) Claim(s)__is/are objectedto.
`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/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.
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`Specification
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`The title of the invention is still not descriptive. A newtitle is required that is clearly indicative
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`of the invention to which the claims are directed.
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`It appears the invention is drawn to the retaining
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`mechanism for a tooth, not the tooth itself.
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`Claim Objections
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`Claim 1 is objected to because of the following informalities:
`
`e
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`“positioned on one surface of thereof and”in line 5 should be amended to read —
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`positioned on one surface thereof and--.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 103
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`The text of those sections of Title 35, U.S. Code not included in this action can be found in a
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`prior Office action.
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`Claims 1-6 and 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 tooth for buckets comprising:
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`

`

`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 3
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`a tooth point having a coupling space that comprisesa first space and a second space
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`communicating with each other (target object 2, first and second spaces 215 and 212a);
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`a damperstructure accommodatedin the first space, and comprising a flexible portion
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`having an insertion groove which is positioned on one surface thereof (see Annotated Figure 1),
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`a hard portion inserted in the insertion groove and having one surface which is a flat surface and
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`is exposed to an outside (damper 4 with flexible portion 42 and hard portion 41; hard portion is
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`considered to be inserted into the groove); and
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`a coupling unit accommodatedin the second space, a portion of which is in contact with
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`the one surface of the hard portion (coupling unit 31; Fig 5),
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`wherein, in response to rotation of the coupling unit in the second space from an initial
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`state, another portion different from the portion of the coupling unit comes into contact with
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`the hard portion (Figs 5a-c),
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`wherein whenthe coupling unit rotates in one direction from the initial state to become
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`a first rotation state, a portion where the coupling unit and the hard portion contact each other
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`is movedin a direction toward the flexible portion further than the initial state, and thus, the
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`hard portion is movedin the direction toward the flexible portion further than theinitial state
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`(Figs 5a-b), and
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`wherein theflexible portion is compressed and deformed between the hard portion and
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`an inner surface of the tooth point forming the first space (Figs 3 and 5a-b).
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`Ryufails to disclose the flexible portion of the damper having a hollow having one side
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`that is open and a sealing portion that blocks the open side of the hollow.
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`However, Hayashi discloses a similar damper structure (7) for a similar function
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`(abstract) with a hard portion (10) and a flexible portion (9) having a hollow (13) with a side that
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`is open and a sealing portion blocking the open side of the hollow (Fig 5 depicts the hollows
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`

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`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 4
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`being away from the hole 6a when installed and blocked by the inner wall of the tooth 3 which
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`is considered to be the sealing portion of the assembly).
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`Ryu and Hayashi are considered analogous to the claimed invention becausethey are in
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`the same field of endeavor. Therefore, it would have been obvious to someone ofordinaryskill
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`in the art before the effectivefiling date of the claimed invention to have modified Ryu to
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`incorporate the teachings of Hayashi and combined the use of hollowsin the flexible portion of
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`the damperstructure with a reasonable expectation of success. One would have done this to
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`allow for better elastic deformation of the flexible portion.
`9EEEREREEREEEEEEEEEEEEEEEEEEEEE,
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`
`connection surface 4CAAPAPELALILEE
`SL—L—LMSHy
`—_—_—_—__
`*
`‘insertion |
`QE —
`WN ‘ groove
`|
`_SRRRRRRRRESRIRII
`
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`
`wl
`
`
`
`
`nnn!teeeeeeee:
`eeeeees support surface
`
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`
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`‘coupling surface
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`
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`
`Annotated Figure 1
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`Regarding claim 2, Ryu further discloses the tooth for buckets wherein the damper
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`structure comprises:
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`a coupling surface coupled to the hard portion;
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`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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`

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`Application/Control Number: 17/396,113
`Art Unit: 3671
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`Page 5
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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 tooth point forming the first space (Fig 3, detail “C”).
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`Regarding claim 3, Ryu further discloses the tooth for buckets wherein at least a part of
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`an externally exposed portion of the coupling surface is in contact with the inner surface of the
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`tooth point forming the first space (Fig 3, detail “C”).
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`Regarding claim 4, Ryu further discloses the tooth for buckets wherein the flexible
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`portion is in contact with the inner surface of the tooth point forming the first space (Fig 3,
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`detail “C”).
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`Regarding claim 5, Ryu further discloses the tooth for buckets wherein when the
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`coupling unit further rotates in the one direction in thefirst rotation state to become a second
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`rotation state, the portion where the coupling unit and the hard portion contact each other is
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`movedin a direction toward the coupling unit further than in the first rotation state, the hard
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`portion is moved in a direction toward the coupling unit further than in the first rotation state,
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`and thus, at least a part of the flexible portion is restored from being compressed and deformed
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`in the first rotation state (Figs 5b-c; the hard portion 41 moves toward the coupling unit 31).
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`Regardingclaim 6, Hayashi, of the combination above, further discloses the tooth for
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`buckets wherein a shape of the flexible portion is deformed to reduce a volume of the hollow,
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`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 a volume ofthe flexible portion is reduced, the volume of the
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`

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`Application/Control Number: 17/396,113
`Art Unit: 3671
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`Page 6
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`hollow is restored (para [0022]; when compressedby an increase in external force, the elastic
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`material escapes into the hollows 13; therefore, the volume of the hollow is reduced).
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`Regarding claim 8, Ryu further discloses the tooth for buckets wherein the tooth pointis
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`a tooth point of an excavator, and wherein the coupling unit couples the tooth point to a tooth
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`adapter (tooth 2 and tooth adapter 1).
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`Response to Arguments
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`Applicant's argumentsfiled 9/13/2023 have been fully considered but they are not persuasive.
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`In response to applicant's arguments against the references individually, one cannot show
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`nonobviousnessby attacking references individually where the rejections are based on combinations of
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`references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
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`231 USPQ 375 (Fed. Cir. 1986). Examiner stated that Ryu does not have hollowsor a sealing portion and
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`that Hayashi teaches those elements for the combination. Similarly, Hayashi is only relied upon for
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`hollows and a sealing portion to seal the hollows from the outside and not the hard portion of the lock
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`as Applicant has argued.
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`The amendedclaim languageis broad and the rejection is maintained. Examiner notes that
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`Applicant’s assembled invention appears to be in Fig 4 of Applicant’s disclosure.
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`In Fig 4, the hollows
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`(H111) are understood to be sealed from the outside by the sealing portion (12).
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`It does not matter that
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`the hollows are formed with an open end and then sealed from the outside by the sealing portion when
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`assembled. The current amendedclaim language drawnto the hollows having an open side is confusing
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`and broad. Examiner suggests further amending the claim language to remove the languagestating the
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`hollows have an open side. Examiner further suggests amending the claims to state that the hollows are
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`fully contained within the flexible portion and closed from the outside since that is what Applicant’s
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`

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`Application/Control Number: 17/396,113
`Art Unit: 3671
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`Page 7
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`assembled apparatus in Fig 4 depicts. The process of how Fig 4 is achieved does not matter in an
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`apparatus claim.
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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
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`Edmonds (U.S. Patent Application Publication No. 20160083935) discloses a similar
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`coupling unit and damperstructure to the claimed invention.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the dateof this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to BLAKE SCOVILLE whose telephone numberis (571)270-7654. The examiner can
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`normally be reached M-F 10:30-6 (ET).
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
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`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.
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`

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`Application/Control Number: 17/396,113
`Art Unit: 3671
`
`Page 8
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`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
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`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.Visit
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`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
`
`