DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings are objected to because:
The shading in Figure 6 needs to be removed. The shading makes the clipper difficult to see.
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 amended replacement 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 number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining 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 renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an 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 informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendment filed 2-6-26 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The disclosure of lines 4-17 added by the amendment is all new matter. There is no support in the original specification that the protrusions 200 can be removed and replaced, that 200 is mounted to the arm via 610, that 610 is a fastener, that 610 extend through the arms, that either or both protrusions can be removable and replaceable, that this embodiment has a position where the protrusions extend inward to contact the body to bias the jaws, that 200 pushes against the body, and that the protrusions can be larger or smaller.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 19 and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regards to claim 19 lines 8 and 24-25 and claim 21 and the specification, the phrase “spring encircling the through-pin”, “first and second lever pads fixedly attached to and substantially flush with distal ends of the first and second action lever arms”, “a key” are unclear. There does not appear to be support for an embodiment with protrusions on the lever arms in combination with the pin spring, the pads, and a key. Therefore, this combination is new matter.
With regards to claim 19 lines 11-13 and the specification, the disclosure that the arms are rotatable relative to the body parts to reposition between storage and cutting configurations in combination with the protrusions on the lever arms is not supported by the original specification and is new matter.
With regards to claim 19 lines 14-15 and the specification, the phrases “a first protrusion removably mounted on the first action lever arm” and “a second protrusion removably mounted on the second action lever arm” are not supported in the original specification and are new matter. There is no support that protrusions 200 are removable.
With regards to claim 19 lines 16-18 and the specification, the disclosure that the protrusions (200) are what contact the body parts to bias the jaws is not supported in the original specification and is new matter. Using Figure 6 and imagining that the lever arms are positioned where the protrusions 200 face the body parts, it is not clear that the protrusions will even touch the body parts to perform the biasing function.
With regards to claim 19 lines 19-20 and the specification, the disclosure that the protrusions are replaceable with alternate protrusions of varying sizes to increase or decrease the gap is not supported in the original specification and is new matter.
With regards to claim 19 lines 22-23 and the specification, the “squeezing” function resulting in the jaws closing is unclear in light of the protrusions biasing the jaws towards each other now being claimed. The specification fails to provide any insight of the squeezing/closing function in relation to the protrusions biasing the jaws. Is the squeezing and biasing of the jaws the same or a different function?
With regards to claim 19 and the specification, it is unclear how the protrusion biases the jaws in a way separate from the squeezing function as claimed. It is unclear what structure defines a cutting configuration even if the protrusions are facing inward. There still appears to be a situation where the protrusions face inward but would still be spaced from the body parts.
With regards to claim 19 and the specification, it is unclear how the lever arms with the protrusions cooperate with the body parts to perform the nail clipping function that results in the jaws being closed. Further definition is needed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19, 21, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regards to claim 19 lines 14-15 and 19-20, it is unclear what structure allows for the protrusions to be removably mounted to the arms and replaceable.
With regards to claim 19 lines 16-18, it is unclear what structure allows for the first and second protrusions to bias the jaws toward one another.
With regards to claim 19 lines 19-20, it is unclear what structure allows for the protrusions to be independently operable to increase or decrease a width of the gap. It is unclear what is meant by “independently operate”? What structure allows each protrusion to work independently from all other structures to change the width of the gap? It is assumed the levers and protrusions would have to respectively work together with the body parts to adjust the width. Further definition is needed.
With regards to claim 19 lines 22-23, the “squeezing” function resulting in the jaws closing is unclear in light of the protrusions biasing the jaws toward each other now being claimed. The specification fails to provide any insight of the squeezing function in relation to the protrusions biasing function. As written, these functions are two separate functions which does not appear to be supported. Is the squeezing of the jaws the same or a different function as the protrusions biasing the jaws? As written, the levers arms are squeezed and the jaw closes but there is no mention of the protrusions. How do the lever arms interact with the jaws in a way that does not involve the protrusions? Further definition is needed.
With regards to claim 23, claim 19 already discloses the distal ends and that they are attached to each other. Claim 23 needs to be amended to disclose “the distal ends of the first and second elongated body parts are attached to each other with a body part fastener”.
Claims
It is to be noted that claims 19 and 21-23 have not been rejected over prior art. It may or may not be readable over the prior art but allowability cannot be determined at this time in view of the issues under 35 USC § 112. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection is not specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:00 am-3:00 pm.
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05 March 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724