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
Claim Objections
Claim 24 is objected to because of the following informalities: The limitation reading “d) carrying out a work process with the wall saw; and d) extracting dust arising during the work process with the dust extractor”
should read:
“d) carrying out a work process with the wall saw; and [[d)]] e) extracting dust arising during the work process with the dust extractor”.
Appropriate correction is required.
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/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are 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, 17, 20-22 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 7055250, Allemann.
Regarding Claim 12, Allemann discloses:
A system (1) comprising:
a wall saw (saw cutting tool 6, comprising handle 13 and guide 7, since the tool may be used on a wall, because it is portable and work supported, and a user can support the tool on a wall surface, see abstract and background); and
a device (3, 11, 33, 23) for covering a cutting gap (the cover parts 11 and 23 cover a gap created by saw blade 6 and 7 on workpiece 2, which gap is opening at bottom of base 3, seen in fig 2, through which saw blade 6 and 7 extends when creating a cut in the workpiece) creatable by the wall saw (figs 4-7), the device including:
a cover (11, 33 and 23) having two ends (front end adjacent to cover part 11 and groove 25, and rear end adjacent to cover 23 and groove 28, fig 2) and the device being used for covering the cutting gap in a working area of the wall saw power tool (see fig 2 and figs 4-6) and the device being connectable to a dust extractor (12), the wall saw (6, 13, and 7) being movable with respect to the two ends of the cover (see fig’s. 4-6); and
holding-down means (22 and 3) for pressing the cover onto a substrate to be worked on (since a user can use the handle 22 to press the plate 3 onto the workpiece 2).
Regarding Claim 17, in Allemann the cover has a prefabricated gap (e.g. either of gap 33 and opening at bottom of base 3, seen in fig 2, through which saw blade 6 and 7 extends when creating a cut in the workpiece) for receiving a tool 7 of the wall saw (6, 7, and 13) during a work process (fig 2, and col 4, 1-5).
Regarding Claim 20, in Allemann the system also comprises wherein the cover has a gap created by the wall saw during a work process (fig 2, gap through which the saw tool 6 and 7 extends through the bottom of the plate 3).
Examiner notes that the limitation of Claim 20 reading: "the cover has a gap created by the power tool during a work process” is considered a statement of 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 is that the prior art reference be capable of said intended use. See MPEP 2114. In this case, the Allemann device is capable of creating the gap in the cover during a use thereof required in claim 20.
Also, with regard to the limitation reading: “created by the power tool during a work process”, this statement may be considered a product-by-Process claim limitation, since the cover in the gap may be the product that is created by the process of using the power tool to create the gap. Product-by-Process claim limitations are not limited to the manipulations of the recited steps, but only the structure implied by the steps. Thus, the patentability of a product does not depend on its method of production, and if a product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even if the prior art product was made by a different process. See MPEP 2113. In this case, if the cover comprises a gap therein then the gap no matter how it is formed, meets the claim.
Regarding Claim 21, in Allemann the system also comprises a guide rail (18, fig 7) for the wall saw (figs 4-7, and col. 6, 50-60).
Regarding claim 22, in Allemann the system as recited in claim 12 comprises: using the device during a dry application of the wall saw power tool (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 33, in Allemann the wall saw includes a saw blade passing through the cover (figs 4-6, where the blade passes through cover portion 23).
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 24 and 28, are rejected under 35 U.S.C. 103 as being unpatentable over Allemann, in view of USPGPUB 20200094438, Winterfjord.
Regarding Claim 24, Allemann discloses:
A method for providing suction to a working area of a wall saw (since the suction port in Allemann connects to the saw cutter area (fig 1-4), 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 (via the cover parts 11 and 23 cover a gap created by saw blade 6 and 7 on workpiece 2, which gap is opening at bottom of base 3, seen in fig 2, through which saw blade 6 and 7 extends when creating a cut in the workpiece);
c) connecting the device to the dust extractor (suction port 12, which can extract dust, and other like particles);
d) carrying out a work process with the wall saw (cutting shown in figs 4-6).
Allemann lacks the device thereof being used for extracting dust from a working area of a wall saw, and extracting dust arising during the work process with the dust extractor.
Winterfjord discloses a cutting power tool where a saw moves relative to a cover and a workpiece, in the same field of endeavor as the cutting power tool where a saw moves relative to a cover and a workpiece device of the present invention and discloses that such a system includes the device thereof being used for extracting dust from a working area of the saw (par 0043), and extracting dust arising during the work process with a dust extractor (parts 11-13 and 32. Par 0043) in order to minimize the creations of dust in a saw cutting environment which dust may be unhealthy when cutting certain materials (par 0003).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Allemann by having the device thereof being used for extracting dust from a working area of a wall saw, and extracting dust arising during the work process with the dust extractor in order to minimize the creations of dust in a saw cutting environment which dust may be unhealthy when cutting certain materials as taught by, Winterfjord.
Regarding Claim 28, in Allemann the work process comprises making a cutting gap in the workpiece with the wall saw (figs 4-6). Thus, as modified above in Claim 26 to have the workpiece be a substrate, the method of use would include making a cutting gap in the substrate with the wall saw.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Allemann in view of USPGPUB 20140271004, Bialy.
Regarding Claim 25, Allemann discloses all the limitations of claim 12 as discussed above.
Allemann lacks wherein the holding-down means includes lower portions of two closing caps closing the two ends (of the cover).
Bialy discloses a cutting power tool where a cutter 93 moves relative to a dust collecting cover 10 and a workpiece 200, in the same field of endeavor as the cutting power tool where a saw moves relative to a cover and a workpiece device of the present invention and discloses that such a system includes the device thereof including holding-down means (30, 40, and 24) including lower portions of two closing caps (30) closing two ends of the cover 10, in order to allow a user to alternately either hold the collector to a workpiece, or have the collector case 10 automatically attach the collector case to the work during cutting (par 0013).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Allemann by having the device thereof include the holding-down means (magnets) which include lower portions of two closing caps (combination of magnets with outer edges of the casing) closing two ends of the casing during cutting in order to allow a user to alternately either hold the collector to a workpiece, or have the collector case automatically attach the collector case to the work during cutting as taught by Bialy.
Claims 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Allemann in view of Bialy and further in view of USPGPUB 20150183130, Gadd.
Regarding Claim 26, Allemann discloses:
A device (1) for covering a cutting gap to be created by a wall saw (saw cutting tool 6, comprising handle 13 and guide 7, since the tool may be used on a wall, because it is portable and work supported, and a user can support the tool on a wall surface, see abstract and background), the device comprising:
a cover (combination of plate 3, and parts 11, 23, and 33) having two side walls (annotated fig 1 below) and a top 23 between the two side walls and having two ends (workpiece), each of the two side walls having a contact surface for contacting a workpiece to be worked on (see annotated fig 1 below, portion of the sidewalls contacting workpiece 2),
the top being penetrable by the wall saw power tool (figs 4-6), the two ends including a forward end and an opposite rear end (see annotated fig 1 below).
Allemann lacks feature I the workpiece being a substrate and feature II two closing caps closing the two ends to seal the forward end and the opposite rear end and to press the cover onto the substrate to be worked on.
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Regarding Feature I Gadd discloses a combined cover and suction device for removing dust from a saw cutting device 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 being used to collect dust and debris when being used on a substrate in order to remove dust from such a workpiece which dust would otherwise be difficult to remove (par 0004 and 0005).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Allemann to have the device thereof be used to remove dust from substrate workpiece in order to remove dust from such a workpiece which dust would otherwise be difficult to remove, and in order to allow a user to use the device on different types of workpieces to include substrates.
Regarding Feature II Bialy discloses a cutting power tool where a cutter 93 moves relative to a dust collecting cover 10 and a workpiece 200, in the same field of endeavor as the cutting power tool where a saw moves relative to a cover and a workpiece device of the present invention and discloses that such a system includes the device thereof including holding-down means (30, 40, and 24) including lower portions of two closing caps (30) closing two ends of the cover 10, in order to allow a user to alternately either hold the collector to a workpiece, or have the collector case 10 automatically attach the collector case to the work during cutting (par 0013).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Allemann by having the device thereof include the holding-down means (magnets) which include lower portions of two closing caps (combination of magnets with outer edges of the casing) closing two ends of the casing during cutting in order to allow a user to alternately either hold the collector to a workpiece, or have the collector case automatically attach the collector case to the work during cutting as taught by Bialy.
Regarding Claim 27, in Allemann the top 23 has a prefabricated gap (gap which allows the saw to pass through the cover part 23 as shown in figs 4-6).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Allemann in view of Winterfjord as applied to Claim 28 above, and further in view of USPGPUB 20130081285, Moreno.
Regarding Claim 29, modified Allemann 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 cerated 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 Allemann 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 Allemann in view of Winterfjord as applied to Claim 28 above, and further in view of USPGPUB 20180104851, Rieger.
Regarding Claims 30-32 Modified Allemann 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).
Allemann 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 Allemann 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 10/28/25, with respect to the rejections of claims 12, 17, and 20-27 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 Allemann.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPNs/USPGPUBs 3378307 4822219 3982521 4836494 20120234305 20180104851 20210069844 5664553 3763845 8011357 7044039 11498243 10293421 4241505 7578063 20130055577 20120084986 7661195 7044039 5964041 2708465 3373781 9038275 20080163492 20120186520 5069695 3373781 5365822 11628587 4660448 20170297225 4241505 and 5001958 disclose state of the art saw or cutting devices which are work supported and thus 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