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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6-22-2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
the “holding down means” in claim 12.
With regard to the term “holding down means”
first, the term “means” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “holding down”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “holding down” preceding the generic placeholder describes the function, not the structure, of the holding down means.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form 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 12, 24 and 35-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPUB 20120132049, Bokelaar.
Regarding Claim 12 Bokelaar discloses:
A system comprising:
a wall saw (cutting device 240, which cuts substrate/wall portion 236, par. 0141); and
a device (combination of parts 232 and 242)
for covering a cutting gap (gap cut into wall/substrate 236 by saw 240) creatable by the wall saw (fig 24, and par 0141-0143; and since the gap/cut is covered, at least in part, by portion 232 of the device), the device including:
a cover (combination of work facing bottom part of tool 240 and guide rail 232) having two ends (annotated fig 24 below) and the device being used for covering the cutting gap in a working area of the wall saw (fig 24) and the device being connectable to a dust extractor (“dust removal device” par 0030) the wall saw being slidable to translate with respect to the cover between the two ends of the cover (fig 24 annotated below in conjunction with par 0145); and
holding-down means (242) for pressing the cover 232 onto a substrate (236) to be worked on (par 0153 and fig 29).
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Regarding Claim 24, Bokelaar discloses a method for extracting dust from a working area of a wall saw (par 0030), the method comprising the following steps: a) providing the system as recited in claim 12 (See Claim 12 rejection above); b) covering the working area with the device (fig 24); c) connecting the device to the dust extractor (par 0030); d) carrying out a work process with the wall saw (par 0030 and 0145); and extracting dust arising during the work process with the dust extractor (par 0030).
Regarding Claim 35, in Bokelaar, the system as recited in claim 12 includes wherein the cover (236) has a contact surface on a top ([of the cover], surface of the part 236 which is contacted by the part 240) between the two ends for contact with the wall saw translatable between the two ends (fig 1).
Regarding Claim 36, Bokelaar discloses wherein the wall saw has at least one wheel contacting the contact surface (par 0101, wheels 64 on carriage 38, which supports the saw, of all of the embodiments, par 0113, fig 4).
Claim Rejections - 35 USC § 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 of this title, 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 12, 17, 20-22, and 33-35, are rejected under 35 U.S.C. 103 as being unpatentable over USPN 5740847, Lasko in view of Bokelaar.
Regarding Claim 12 Lasko discloses:
A system comprising:
a wall saw (“power saw base plate” 15 and “Sawe base plate” 18, which cuts wall portion “workpiece” 19, col. 4, lines 5-25); and
a device (10)
for covering a cutting gap (gap cut into wall/workpiece 19 by saw 15/18, which is covered, at least in part, by plate 11 of the device) creatable by the wall saw (col. 4, lines 5-25), the device including:
a cover (combination of parts 11/12 and 18) having two ends (annotated fig 1 below) and the device being used for covering the cutting gap in a working area of the wall saw (fig 1, since the gap/cut is covered, at least in part, by portions 18 and 11-12 of the device) and the wall saw being slidable to translate with respect to the cover between the two ends of the cover (col. 4, lines 5-25, disclosing that the saw is slid along cut line 21 from one end to the other end of the base plate 11/18); and
holding-down means (“clamps” and see annotated fig 1 below) for pressing the cover 11/18 onto a workpiece (19) to be worked on (col. 4, lines 5-25).
Lasko lacks the device being connectable to a dust extractor.
Bokelaar discloses a power saw guiding device, in the same field of endeavor as the power saw guiding device of the present invention and discloses that such a system includes the device being connected to a dust extractor (par 0030) in order to allow dust generated by the saw be exited from the device (par 0030).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lasko by including the device being connectable to a dust extractor in order to allow dust generated by the saw be exited from the device, as taught by Bokelaar.
With regard to the workpiece being a substrate, this is considered a statement of intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. The only requirement in these limitations is that the prior art reference be capable of said intended use. See MPEP 2114. Here, the cutting device and guide may be used to cut substrates of certain strengths.
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Regarding Claim 17 in Lasko the cover has a prefabricated gap for receiving a tool of the wall saw during a work process (since the gap is cut by the saw prior to cutting the workpiece, col. 4, 5-15, gap 20 is cut into the panel 11/18).
Regarding Claim 20 in Lasko wherein the cover has a gap created by the wall saw during a work process (col. 4, 5-15, gap 20 is cut into the panel 11/18).
Regarding Claim 21, in Lasko the system as recited in claim 12 further comprises a guide rail 16 for the wall saw (col. 4, 5-35).
Regarding Claim 22, in Lasko the method for operating the system as recited in claim 12 comprises: using the device during a dry application of the wall saw (since the device can be used in either a wet or dry environment; e.g. nothing in the disclosure of Allemann precludes its use in a dry application).
Regarding Claim 25, in Lasko wherein the holding-down means includes lower portions of two closing caps closing the two ends (see annotated fig 1 above).
Regarding Claim 33, in Lasko, the wall saw includes a saw blade passing through the cover (fig 2).
Regarding Claim 34, in Lasko, the system as recited in claim 12 further comprises a wall saw support (13/17), the wall saw slidable on the wall saw support (col. 4, 5-15), the wall saw support being spaced from and parallel to the cover (11-12 and 18, see fig 1, showing the spacing/parallel nature thereof).
Regarding Claim 35, in Lasko, the system as recited in claim 12 includes wherein the cover has a contact surface on a top ([of the cover], surface of the part 12 which is contacted by the part 18) between the two ends for contact with the wall saw translatable between the two ends (fig 1).
Claims 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 3373781, Grosswald.
Regarding Claim 26, Grosswald discloses a device (combination of saw assembly 10, shoe means 12, and plate part 1) for covering a cutting gap to be created by a wall saw (11, since the parts as seen in fig 2 cover the cut created by the part 11), the device comprising:
a cover (plate 1 and bottom of saw 10) having a side wall (8) and a top (top of plate 3) and having two ends (left and right ends in fig 4), the side wall 8 having a contact surface 8a for contacting a workpiece B to be worked on (fig 4), the top (top of plate 1, in fig 4) being penetrable by the wall saw (via opening 2, see fig. 2), the two ends including a forward end (left in fig 4) and an opposite rear end (right in fig 4) the cover having a further contact surface on the top between the two ends for contact with the wall saw translatable between the two ends (fig 2, top being surface which is in contact with the plate 12 in fig 2, e.g. at portions 3 and 4); and
a closing cap 9 closing one of the ends (see fig 1 and 3) to seal the forward end (fig 4) and to press the cover onto the substrate to be worked on (sealing against the workpiece, fig 3).
Grosswald lacks the sidewall being one of two sidewalls and the top being between the two side walls, each of the two side walls having a contact surface for contacting a substrate to be worked on, and a second closing cap closing the other of the ends to seal the rearward end.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lasko by including having the sidewall being one of two sidewalls and the top being between the two opposing side walls, each of the two side walls having a contact surface for contacting a substrate to be worked on, and a second closing cap closing the other of the ends of the cover to seal the rearward end of the cover, in order to support the cover and the workpiece on both ends of the cover, for additional support during cutting, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
With regard to the workpiece being a substrate, this is considered a statement of intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. The only requirement in these limitations is that the prior art reference be capable of said intended use. See MPEP 2114. Here, the cutting device and guide may be used to cut substrates of certain strengths.
Regarding Claim 27, in Grosswald the top has a prefabricated gap (since the gap is prefabricated onto the over before the saw is inserted thereto).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Bokelaar in view of Lasko.
Regarding Claim 28, Bokelaar discloses all of the limitations of Claim 24 as discussed above.
Bokelaar lacks: wherein the work process comprises making a cutting gap in the substrate with the wall saw.
Lasko discloses a power saw guiding device, in the same field of endeavor as the power saw guiding device of the present invention and discloses that such a system includes the tool used therein to also make a cut into the cover to create the gap that is used to guide the saw.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bokelaar by using the saw to create a gap in the cover for guiding the saw in order to allow a user to create a gap to guide a particular tool in real time, with a desired length or width.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Bokelaar in view of Lasko as applied to Claim 28 above, and further in view of USPGPUB 20130081285, Moreno.
Regarding Claim 29, modified Bokelaar lacks wherein the cutting gap has a length between 0.1 and 10m.
Moreno discloses a combined cover and suction device for removing dust from a saw cutting device (see abstract/par 0036), in the same field of endeavor as the combined cover and suction device for removing dust from a saw cutting tool of the present invention and discloses that such a system includes the device having a space in which a gap created by the saw on the workpiece having a length of 6cm (par 0090) (which is within the range of 0.1 to 10m).
It would have been obvious as a matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bokelaar by having wherein the length of the cutting gap being 6cm, and thus within a range of 0.1 to 10m, since the changing of a shape of an element of an invention was held to be in the realm of design choice to one of ordinary skill in the art, see In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), and MPEP 2144.04-IV.B, and since Moreno discloses this size being known in a device in the same field. Further, Applicant has not established any criticality to the particular proportions claimed with regard to the wherein the length of the gap.
Claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Bokelaar in view of Lasko as applied to Claim 28 above, and further in view of USPGPUB 20180104851, Rieger.
Regarding Claims 30-32 Modified Bokelaar includes wherein the covering of the working area includes placing the cover on the substrate (see claim 28 rejection), and the work process further comprises passing a saw blade of the wall saw through the cover to cut the wall with the wall saw (see Claim 26 and 28 rejections above).
Bokelaar lacks the substrate being a wall (Claim 30) and wherein the wall is a vertical wall (Claim 31) and wherein the substrate is a vertical wall (Claim 32).
Rieger discloses a combined cover and wall saw cutting device (see abstract, fig 1A), in the same field of endeavor as the combined cover and wall saw cutting tool of the present invention and discloses that such a system includes the wall saw being used on walls being substrates. (par 002 and 0043), Claim 30, and wherein the wall is a vertical wall (par 0004), Claim 31 and wherein the substrate is a vertical wall (Claim 32) (par 002-0004 and 043), in order to allow the device to not only be used on floors but also on walls and ceilings, with improved operation comfort for the operator (par 0002-0004 and0019).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bokelaar by having the device include mountings which allow for work on a wall being a substrate and being a vertical wall in order to allow the device to not only be used on floors but also on walls and ceilings, with improved operation comfort for the operator, as taught by Rieger.
Response to Arguments
Applicant’s arguments, see remarks, filed 6/24/26, with respect to the Claim objections have been fully considered and are persuasive. With regard to the claim objections, Applicant has amended the claims in accordance with examiner’s recommendations rendering the claim objections moot.
Applicant’s arguments, see Remarks, filed 6/24/26, with respect to the rejections of the claims under 35 USC 102/103 (as the claims have now been amended) have been fully considered and are persuasive. Therefore, the prior art rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bokelaar Lasko and Grosswald.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPNs/USPGPUBs Substrate 4118268 20120132049 4679476 20140182443 20240391128 2708465 4489634 4291602 3298407 3586077 20080127790 20080127790 10173341 20120132049 5740847 20040031365 5774992 20060042439 4783983 5040445 and 5964041, disclose state of the art guides for working cutting devices. Thus, each of these references disclose elements relevant to the present invention/application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FERNANDO A AYALA whose telephone number is (571)270-5336. The examiner can normally be reached Monday-Friday 9am-5pm Eastern standard.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached on 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FERNANDO A AYALA/Examiner, Art Unit 3724
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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