DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102 and 103 (or as subject to pre-AIA 35 U.S.C. §§ 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restriction
Applicant’s election, with traverse, of Group I in the reply filed on 24 November 2025 is acknowledged. The traversal is on the ground(s) that independent claim 17 of Group II has been amended to require that the method is practiced using the saw guide of Group I. In light of the amendment, the requirement for election/ restriction has been withdrawn. An action of the merits of claims 1-20 follows.
Abstract Objections
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
It should avoid using phrases which can be implied, such as, “Disclosed is,” “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc.
Appropriate correction for the above list of issues is required.
Claim Objections
Claims 1, 5-6 and 17-18 are objected to because of the following informalities.
In re claim 1: it appears “latitudinally” and “axially” should be –longitudinally– and –laterally–.
In re claim 5: it appears “latitudinally” should be –longitudinally–.
In re claim 6: the claim would be in better form if “motionable” were –movable–.
In re claim 17: “said boom said finger” in line 13 should be –said boom, said finger– to be grammatically correct; “finger-upon” should be –finger upon–.
In re claim 18: it appears “on” in line 3 should be –in–
Appropriate correction for the above list of issues is required.
Claim Rejections - 35 U.S.C. § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL — The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 15 and 16 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement; any claims not directly addressed are only rejected under 35 U.S.C. § 112(a) for being dependent on a rejected base claim. The claim(s) contain(s) subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
In re claim 15: the claim recites “said finger includes a finger girth less than a guide blade girth.” However, this limitation lacks written description in the specification because it appears there is only description for up to 50% less than a guide blade girth, whereas the claim limitation allows for values beyond those which are described.
In re claim 16: said finger girth is greater than 75% of said guide blade girth. However, this limitation lacks written description in the specification because it appears there is only description for greater than 75% but less than 150%, whereas the claim limitation allows for values beyond those which are described.
Appropriate correction for the above list of issues is required.
Claim Rejections - 35 U.S.C. § 112(b)
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.
Claims 1-20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Any claims not directly addressed are only rejected under 35 U.S.C. § 112(b) for being dependent on a rejected base claim.
In re claims 1 and 5: “substantially-rigid” renders the claim indefinite because “rigid” is a relative and/or subjective term and metes and bounds for the term have not been established.
Further, the claim recites “a substantially-rigid finger, rotatably and slidably affixed about said boom … and having a finger compressor adapted to form a press fit between said finger and said boom.” This seems to be a physical impossibility since a press fit (i.e., interference fit) prevents movement of relative parts. Therefore, the claim is ambiguous.
In re claims 2, 10, 12-13 and 15-16: it is unclear what dimension “girth” is referring to. The applicant appears to be using the term outside of its ordinary meaning as Merriam-Webster’s online dictionary defines girth as “a measure around a body”. The term is indefinite because the specification does not clearly redefine the term. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Note that a change of terms within the claims should have a corresponding amendment within the specification to avoid an objection to the specification.
In re claim 8: the scope of “approximately less than 0.75x” is unclear since metes and bounds for “approximately” have not been established. There is no antecedent basis for “said blade height”; it should be –a height of said blade–.
In re claim 9: the scope of “approximately less than 0.5x” is unclear since metes and bounds for “approximately” have not been established. If the applicant changes “said blade height” as suggested in claim 8, then “said blade height” in the instant claim should be –said height of said blade–.
In re claim 14: it is unclear what dimension “girth” is referring to. The applicant appears to be using the term outside of its ordinary meaning as Merriam-Webster’s online dictionary defines girth as “a measure around a body”. The term is indefinite because the specification does not clearly redefine the term. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Note that a change of terms within the claim should have a corresponding amendment within the specification to avoid an objection to the specification.
Further, it is unclear which dimension of the guide blade is being referred to.
In re claim 17: “substantially rigid” and “rigid finger” renders the claim indefinite because “rigid” is a relative and/or subjective term and metes and bounds for the term have not been established.
Further, the claim recites “a substantially rigid finger, rotatably and slidably affixed about said boom … and having a finger compressor adapted to form a press fit between said finger and said boom.” This seems to be a physical impossibility since a press fit (i.e., interference fit) prevents movement of relative parts. Therefore, the claim is ambiguous.
The claim relies upon features of a saw for describing the steps of the method. For example, a “saw handle”, a “guide blade”, and “radially actuating teeth”. However, the claim does not include a step of providing a saw having these features. Should the applicant’s intension be to rely on any structural part of a device, in support of patentability, then a step of providing/utilizing such device and its components must be included in the method claim.
In re claim 18: there is no antecedent basis in the claims for “said positioning step” and “said saw guide blade”. And “wherein said positioning step includes said saw guide blade prior to said initiating step” is grammatically incorrect since it is missing necessary terms. What does it include doing with the saw guide blade?
In re claim 19: “substantially rigid” renders the claim indefinite because “rigid” is a relative and/or subjective term and metes and bounds for the term have not been established.
In re claim 20: “sufficient” renders the claim indefinite because it is a relative and/or subjective term and metes and bounds for the term have not been established.
Appropriate correction for the above list of issues is required.
Claim Rejections - 35 U.S.C. § 102
The following is a quotation of the appropriate paragraph of 35 U.S.C. § 102 that forms the basis for the rejections under this section made in this Office Action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3 and 5 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Boehler et al. (DE 20 2005 000 972 U1).
In re claim 1, which is being examined as best understood: Boehler et al. (DE 20 2005 000 972 U1) discloses a saw guide (fig. 1-3) for attachment to a portable, mechanical saw handle 9, said guide comprising:
a substantially-rigid housing 8 having a central cavity (formed by recesses 18, 19), expandably adjustable along at least one guide bar 13 to accommodate the handle 9, and defining a peripheral track channel 25 with an axial housing compressor 23 extending within said housing 8 to extend adjacent to said channel 25;
an elongate boom 2, slidably mounted within said peripheral track channel 25 and extending from said track channel 25; and
a substantially-rigid finger 3, rotatably and slidably affixed about said boom 2, extending axially from said boom 2 beyond an extant of said housing 8, and having a finger compressor 33 adapted to affix said finger 3 on said boom 2.
In re claim 3, which depends on claim 1: Boehler discloses said finger 3 terminates in a substantially rounded terminus surface 40 (fig. 2).
In re claim 5, which is being examined as best understood: Boehler discloses a cutting system comprising:
a portable, mechanical saw having radially actuating teeth about a guide blade, extending into a saw casing, having a length and height, said casing having a handle 9 (fig. 1 and § [0001], “chainsaw”; note that radially actuating teeth about a guide blade and extending into a saw casing are inherent features of portable chain saws); and
a saw guide (fig. 1-3) comprising:
a substantially-rigid housing 8 having a central cavity (formed by recesses 18, 19), expandably adjustable along at least one guide bar 13 to accommodate the handle 9, and defining a peripheral track channel 25 with an axial housing compressor 23 extending within said housing 8 to extend adjacent to said channel 25;
an elongate boom 2, slidably mounted within said peripheral track channel 25 and extending from said track channel 25; and
a substantially-rigid finger 3, rotatably and slidably affixed about said boom 2, extending axially from said boom 2 beyond an extant of said housing 8, and having a finger compressor 33 adapted to affix said finger 3 on said boom 2.
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.
Claims 1-2, 4-10 and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Nelson et al. US 4,341,018), in view of Boehler et al. (DE 20 2005 000 972 U1).
In re claim 1, which is being examined as best understood: Nelson et al. (US 4,341,018) discloses a saw guide (fig. 1-3) for attachment to a portable, mechanical saw handle 15, said guide comprising:
a substantially-rigid housing 29 having a central cavity 35 to accommodate the handle 15, and defining a peripheral track channel 45 with an axial housing compressor 47 extending within said housing to extend adjacent to said channel 45;
an elongate boom 41 slidably mounted within said peripheral track channel 45 and extending from said track channel 45; and
a substantially-rigid finger 43 extending from said boom 41 beyond an extant of said housing 29.
Nelson does not disclose the housing is expandably adjustable along at least one guide bar.
Boehler, in the same field of endeavor, teaches a housing 8 expandably adjustable along at least one guide bar 13 (fig. 1). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Nelson in this manner, as taught by Boehler, because merely selecting from known types of housings allowing for sufficient functionality would be obvious to the ordinary artisan.
Modified Nelson does not disclose the finger is rotatably and slidable affixed about said boom, and having a finger compressor adapted to selectively affix said finger on said boom.
Boehler further teaches a finger 3 rotatably and slidably affixed about a boom 2, and having a finger compressor 33 adapted to affix said finger 3 on said boom 2 (fig. 2). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson in this manner, as taught by Boehler, thereby providing Nelson with enhanced adjustability of the saw guide. This configuration allows the distance between the finger 43 and the guide blade 17 of Nelson to be easily adjustable without the need for additional tools.
In re claim 2, which depends on claim 1: Nelson discloses said track channel 45 extends through a girth of said housing 29 to permit said boom 41 to extend beyond said housing in two aspects (fig. 1).
In re claim 4, which depends on claim 2: Nelson discloses said finger 43 includes a substantially flush interior surface (fig. 1). Note that Merriam-Webster’s online dictionary defines flush as “having or forming a continuous plane or unbroken surface.”
In re claim 5, which is being examined as best understood: Nelson et al. (US 4,341,018) discloses a cutting system (fig. 1) comprising:
a portable, mechanical saw 11 having radially actuating teeth (teeth on chain 19) about a guide blade 17, extending into a saw casing 13, having a length and height, said casing having a handle 15 (fig. 1); and
a saw guide (fig. 1-3) comprising:
a substantially-rigid housing 29 having a central cavity 35 to accommodate the handle 15, and defining a peripheral track channel 45 with an axial housing compressor 47 extending within said housing to extend adjacent to said channel 45;
an elongate boom 41 slidably mounted within said peripheral track channel 45 and extending from said track channel 45; and
a substantially-rigid finger 43 extending from said boom 41 beyond an extant of said housing 29.
Nelson does not disclose the housing is expandably adjustable along at least one guide bar.
Boehler teaches a housing 8 expandably adjustable along at least one guide bar 13 (fig. 1). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Nelson in this manner, as taught by Boehler, because merely selecting from known types of housings allowing for sufficient functionality would be obvious to the ordinary artisan.
Modified Nelson does not disclose the finger is rotatably and slidable affixed about said boom, and having a finger compressor adapted to selectively affix said finger on said boom.
Boehler further teaches a finger 3 rotatably and slidably affixed about a boom 2, and having a finger compressor 33 adapted to affix said finger 3 on said boom 2 (fig. 2). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson in this manner, as taught by Boehler, thereby providing Nelson with enhanced adjustability of the saw guide. This configuration allows the distance between the finger 43 and the guide blade 17 of Nelson to be easily adjustable without the need for additional tools.
In re claim 6, which depends on claim 5: Nelson discloses said elongate boom 41 is slidably motionable to maintain a position between said housing 29 and said casing 13.
In re claim 7, which depends on claim 5: Nelson discloses said finger 43 projects parallel to said blade 17 (fig. 1).
In re claims 8 and 9, which depend on claims 7 and 8, respectively: note that when claim 9 is taught by the prior art then claim 8 is also taught. Modified Nelson does not explicitly teach said finger includes a finger length less than 0.5x said blade height, as claim 9 requires.
However, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson in this manner, since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (MPEP § 2144.04 subsection IV.A).
In re claim 10, which depends on claim 5: Nelson discloses said track channel 45 extends through a girth of said housing 29 to permit said boom 41 to extend beyond said housing in two aspects (fig. 1).
In re claim 12, which depends on claim 6: Nelson discloses said finger 43 includes a substantially flush interior surface (fig. 1). Note that Merriam-Webster’s online dictionary defines flush as “having or forming a continuous plane or unbroken surface.”
Claims 3 and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Nelson, in view of Boehler, and further in view of Wallis (US 4,625,407).
In re claims 3 and 11, which depend on claims 1 and 5, respectively: modified Nelson does not explicitly teach said finger terminates in a substantially rounded terminus surface.
Wallis (US 4,625,407), in the same field of endeavor, teaches a finger 40 terminating in a rounded terminus surface (fig. 2). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson in this manner, since it has been held that merely changing the shape of features known from the prior art is an obvious matter of design and/or engineering choice (MPEP § 2144.04 subsection IV.B).
Claims 13-16 are rejected under 35 U.S.C. § 103 as being unpatentable over Nelson, in view of Boehler, and further in view of Clark (US 7,861,416).
In re claims 13-16: modified Nelson does not explicitly teach a finger girth relative to a blade girth. Note that these limitations are directed to the ability to insert the finger within a mark cut into the wood log by the chain saw blade, and if the girth of the finger is too much greater than 150% of the guide blade girth then the finger will not fit within the mark (see the applicant’s specification at pg. 11, ln. 5-13). Further note that if the narrowest limitation of claims 13-16 is met, then the broader limitations are also met.
Clark (US 7,861,416), in the same field of endeavor, teaches a disc 16 (equivalent of Nelson’s finger 43) having a thickness configured to fit within a mark 82 cut into a wood log by a chain saw blade (fig. 12-13; col. 6, ln. 7-19). It is clear from this that a thickness/girth of the disc/finger is a result-effective variable since, if the thickness/girth of the disc/finger is too large it will not fit into the mark. Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson such that the finger girth is between 75% and 100% of the guide blade girth, since it has been held that where the general conditions of the claim are met by the prior art, determining the optimum or workable ranges is within the level of ordinary skill in the art (MPEP § 2144.05). Selecting a value within this range would ensure the finger can be inserted into a cut mark with relative ease while also ensuring the finger has sufficient strength and rigidity.
Claims 17 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Nelson, in view of Boehler, as evidenced by Gauthier (US 4,210,049).
In re claims 17 and 19: Nelson discloses a process for cutting a wood log using a portable, mechanical saw, the process comprising:
mounting a saw guide (fig. 1-3) for attachment to a portable, mechanical saw handle 15,
said guide comprising:
a substantially-rigid housing 29 having a central cavity 35 to accommodate the handle 15, and defining a peripheral track channel 45 with an axial housing compressor 47 extending within said housing to extend adjacent to said channel 45;
an elongate boom 41 slidably mounted within said peripheral track channel 45 and extending from said track channel 45; and
a substantially-rigid finger 43 extending from said boom 41 beyond an extant of said housing 29;
rotating said rigid finger to contact said cross-cut end surface in a position oriented to permit contact of said wood by said guide blade (fig. 1 and col. 3, ln. 5-22); and
initiating radially actuating teeth (teeth on chain 19) about guide blade 17 and cross-cutting through said wood log (fig. 1).
Nelson does not disclose the housing is expandably adjustable along at least one guide bar.
Boehler teaches a housing 8 expandably adjustable along at least one guide bar 13 (fig. 1). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Nelson in this manner, as taught by Boehler, because merely selecting from known types of housings allowing for sufficient functionality would be obvious to the ordinary artisan.
Nelson does not explicitly disclose bracing a wood log having a cross-cut end surface.
However, the examiner takes official notice of such features as being well known and conventional within the prior art, as evidenced by Gauthier (fig. 1).
Modified Nelson is silent regarding slidably adjusting the finger about said boom, the finger having a finger length less than a saw guide blade height; and locking said finger upon said boom.
Boehler further teaches a finger 3 rotatably and slidably affixed about a boom 2, and having a finger compressor 33 adapted to lock said finger 3 on said boom 2 (fig. 2). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson the finger is selectively slidably and rotatably adjustable on said boom, as taught by Boehler, thereby providing Nelson with enhanced adjustability of the saw guide. This configuration allows the distance between the finger 43 and the guide blade 17 of Nelson to be easily adjustable without the need for additional tools. It would have also been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson such that the finger length is less than a guide blade height, since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (MPEP § 2144.04 subsection IV.A).
Claims 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Nelson, in view of Boehler, as evidenced by Gauthier, and further in view of Clark.
In re claim 18, which depends on claim 17 and is being examined as best understood: modified Nelson is silent regarding said adjusting step including pressing said saw guide blade into said log to leave an embedded original mark, and further comprising the step of positioning said finger on said original mark and embedding an ancillary embedded mark with said guide blade downward from said original mark, and wherein said positioning step includes said saw guide blade prior to said initiating step.
However, Clark teaches placing a disc 16 (equivalent of a finger) at the end of a cross-cut log and pressing a guide blade into the log to leave an embedded original mark 82 (fig. 11), then positioning the disc 16 in the original mark 82 and embedding an ancillary embedded mark 88 (fig. 12-13). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson in the claimed manner, as taught by Clark, because applying known techniques to yield predictable results requires only routine skill in the art (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over Nelson, in view of Boehler, as evidenced by Gauthier, and further in view Hoffman (US 2,765,007).
In re claim 20, which depends on claim 17: modified Nelson is silent regarding said adjusting step including pressing said saw guide blade into said log sufficient to leave an embedded original mark, and further comprising the step of positioning said finger above said original mark and embedding an ancillary embedded mark with said guide blade downward from said original mark.
However, Clark teaches embedding original and ancillary marks in a log to be cut (fig. 11-13). And Hoffman, in the same field of endeavor, teaches positioning the end of a saw guide above a cut made in a log (fig. 1). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Nelson in the claimed manner, as taught by Clark and Hoffman, because applying known techniques to yield predictable results requires only routine skill in the art (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Bennett et al. (US 4,951,398) teaches a flat finger (fig. 3);
Ott (US 2015/0121712) teaches the use of press fit connections in a saw guide (¶ 27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is 303-297-4445. The examiner can normally be reached on Monday - Friday: 8:00 - 5:00 (Mountain Time).
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/JARED O BROWN/Primary Examiner, Art Unit 3725